Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE JOHN R. J. SORENSON
Appeal No. 640-98
May 28, 1987
Application for Patent filed February 1, 1982, Serial No. 344,309, which is a Continuation of Serial No. 154,132, filed May 29, 1980. Method For Treating Convulsions With Organic Copper Compounds.
Harry C. Jones, III, et al. for appellant
Primary Examiner--Frederick E. Waddell
Before Winters, Steiner and W. Smith
Appeal from the examiner's decision refusing to allow claims 25 through 27. Claims 22 through 24 and 36 stand allowed. Claims 28, 31 through 35 and 37 through 39, which are the only other claims remaining in this application, stand objected to as depending from a rejected claim.
Claim 25 is representative:
25. A method of treating convulsive tremors or convulsive seizures comprising administration to mammals of a therapeutically effective amount of an organic compound of copper having anticonvulsive activity selected from copper complexes of imines and binuclear copper complexes of carboxylic acids, or mixtures thereof.
The examiner does not rely on any prior art references. Nor does he set forth a prior art rejection. Rather, the sole issue presented for review is whether the examiner correctly rejected claims 25 through 27 under 35 USC 112, first paragraph, as not adequately supported by a written description in the specification.
We shall not sustain this rejection.
Having reviewed the rejection in light of the opposing arguments of record, we agree with appellant that the claimed subject matter is adequately supported in appellant's specification disclosure and, therefore, that the appealed claims comply with 35 USC 112, first paragraph. Essentially, we are in full agreement with the position set forth by appellant in his Brief. We shall therefore adopt that position as our own, adding the following remarks for emphasis only.
The examiner brings to our attention the following recitations in the claims on appeal: (1) 'copper complexes of imines', (2) 'binuclear copper complexes of carboxylic acids', and (3) 'a binuclear copper complex of an aliphatic carboxylic acid or a binuclear copper complex of an aryl carboxylic acid'. Focusing on the written description requirement of 35 USC 112, first paragraph, the examiner takes the position that those recitations do not appear in appellant's original disclosure and, moreover, that they are not adequately supported by the examples in the specification disclosure.
The examiner does not deny that appellant's specification supports and broad expressions 'an organic compound of copper', 'copper complexes of carboxylic acids', the 'copper complex of an aliphatic carboxylic acid', and the 'copper complex of an aryl carboxylic acid'. Rather, the examiner asserts that appellant's specification disclosure does not support the above-noted, narrower expressions. We recognize that, under certain circumstances, the description requirement of 35 USC 112, first paragraph may operate to defeat the patentability of a narrow but not a broader claim. In re Smith, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972). By the same token, we are mindful that appellant's specification need not describe the claimed invention in ipsis verbis to comply with the written description requirement. In re Edwards, 568 F.2d 1349, 196 USPQ 465 (CCPA 1978). The test is whether the originally filed specification disclosure reasonably conveys to a person having ordinary skill that applicant had possession of the subject matter later claimed. In re Kaslow, 707 F.2d 1366, 217 USPQ 1089 (Fed. Cir. 1983). By the very nature of the inquiry under this statutory provision, each case turns on its own specific facts. In re Edwards, 568 F.2d at 1352, 196 USPQ at 467. As stated in In re Wilder, 736 F.2d 1516, 222 USPQ 369 (Fed. Cir. 1984), the inquiry into whether the description requirement is met must be determined on a case by case basis and is a question of fact. Moreover, the examiner has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in appellant's specification disclosure a description of the invention defined by the claims. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
*2 Here, the examiner states that the claim expressions at issue 'do not appear in the original disclosure', which means to say that they do not find literal support therein. See the Examiner's Answer, page 2. Further, the examiner states, the expressions 'are not adequately supported by the few specific compounds in the specification'. Again, see the Examiner's Answer, page 2. Based on those pronouncements, the examiner concludes that appellant's claimed subject matter is not supported by a written description in the specification as filed. Quite clearly, however, the examiner has not met his initial burden of presenting evidence why a person having ordinary skill in the art would not recognize in appellant's specification a description of the invention defined by the claims. In re Wertheim, supra. Furthermore, the only reasoning presented which we can discern is an example of ipse dixit reasoning, resting on a bare assertion by the examiner.
With respect to the claim recitation 'copper complexes of imines', we agree with appellant that his originally filed disclosure reasonably conveys to a person having ordinary skill in the art that he had possession of that subject matter. Although appellant originally used the term 'copper complexes of . . . amines', we find that the skilled artisan would have understood this to be an inadvertent error and that 'copper complexes of imines' was intended. In this regard, note particularly Table VIII of the orginal disclosure which lists working examples of imines falling within the scope of appellant's invention. Reading the original disclosure as a whole, as we must, we find it clear that 'amines' was error, that 'imines' was intended, and that this error would have been understood by a person having ordinary skill in the art.
With respect to the claim recitations 'binuclear copper complexes of carboxylic acids', a 'binuclear copper complex of an aliphatic carboxylic acid', and 'a binuclear copper complex of an aryl carboxylic acid', we again agree with appellant that his originally filed disclosure reasonably conveys to the skilled artisan that he had possession of that subject matter. As pointed out by appellant in his Brief, the specification disclosure as filed presents five working examples of binuclear copper complexes of carboxylic acids. Four of those are representative of a binuclear copper complex of an aryl carboxylic acid and one is representative of a binuclear copper complex of an aliphatic carboxylic acid. Note particularly the pictorial representation in Figure I, page 7 of the specification as filed. Given those working examples together with the broader disclosure of copper complexes of carboxylic acids, both aliphatic and aromatic, we have no doubt that appellant's disclosure reasonably conveys to the skilled artisan that appellant had possession of the subject matter now claimed.
For the reasons stated in appellant's Brief, as amplified above, the examiner's decision refusing to allow claims 25 through 27 is reversed.
BOARD OF PATENT APPEALS AND INTERFERENCES
Sherman D. Winters
Arthur J. Steiner
William F. Smith