BPAI Board of Patent Appeals and Interferences Patent and Trademark Office (P.T.O.) *1 EX PARTE KENNETH L. RINEHART, JR. Appeal No. 564-47

Board of Patent Appeals and Interferences

Patent and Trademark Office (P.T.O.)



Appeal No. 564-47

January 10, 1985



 Application for Patent filed September 8, 1981, Serial No. 299,893. This Application is a Division of Serial No. 217,768 filed December 18, 1980, Abandoned; and a Continuation-in-Part of Serial No. 186,932, filed September 12, 1980, Abandoned. Composition of Matter and Process.



Lawrence T. Welch et al. for appellant



Primary Examiner--Jerome D. Goldberg



Before Serota, Merker and Steiner












 This is an appeal from the final rejection of claims 7 to 10, 37 and 38, the only claims remaining in the case.



 The subject matter of the claimed invention is illustrated by claim 7 which reads as follows:



 7. A process for preparing didemnin A, which has the following characteristics:



 (1) molecular weight of 942.5678 (mass spectroscopy);



 (2) molecular formula -C@49H@78N@6O@12;



 (3) is soluble in methanol, ethanol, isopropanol, dioxane, ethyl acetate, and chloroform, and sparingly soluble in toluene, and insoluble in water;



 (4) a characteristic infrared absorption spectrum as shown in Figure 1 of the drawings;



 (5) amino acid composition as follows: one mole of leucine, N--methylleucine, threonine, proline, N,O-dimethyltyrosine, and statine;



 (6) an Rf of 0.46-0.52,



 which comprises



 (a) extracting a suitable marine tunicate from the family Didemnidae with MeOH:toluene (3:1);



 (b) purifying the resulting extract with silica gel chromatography using the solvent system CHCl@3:MeOH in step gradient fashion; and



 (c) recovering essentially pure Didemnin A having an Rf of 0.46-0.52.



 No reference has been relied on by the examiner.



 The claims on appeal stand rejected under 35 USC 112, first paragraph as lacking support, for lack of deposit of the marine tunicate and for failing to set forth process parameters. We shall not sustain the rejection.



 It is the position of the examiner that the disclosure enables practice of the invention only as set forth on pages 1-11 of the specification and the claims should be so limited. We fail to find anything in the claims which are outside the scope of that which is described in the specification. Each of claims 7, 9 and 37 and the claims dependent thereon are specific to the process of preparing Didemnin A, B and C having the specified characteristics set out in the claims. The specification describes how to prepare each of the enumerated species; the claims and the disclosure are of clear, definite and determined scope. The specification provides, by way of a written description and examples, clear and adequate direction to enable one to produce the specifically described and claimed subject matter. In essence, the claims are drawn to what is precisely disclosed in and enabled by the specification.



 With respect to the lack of deposit of the marine tunicate, we find that the source of the marine organisms necessary for practice of the invention is described in detail in the specification by reference to specific locations in the sea.



  *2 The marine tunicata are a well known class of marine microorganisms having definitive characteristics. [FNa1] Appellant has described the phylum, subphylum, class, order and suborder as well as where the organisms are located and how they can be obtained. The marine microorganisms are neither new nor unique but are commonly known and generally available to the public without any undue experimentation. In this area of technology, the written description sufficiently discloses how to obtain the tunicata from various specified locations in the sea. Accordingly, we see no necessity for a deposit of the organism.



 With reference to the examiner's holding that the claims are too broad in failing to set forth all process parameters, we note that the claims set forth the steps in a clear and cogent manner. Thus, the extraction of the marine tunicate with methyl alcohol and toluene in a defined ratio, followed by separation and purification of the extract with silica gel chromatography in step gradient fashion by eluting the column with a specific solvent system is a well known technique. We perceive of no reason to require process limitations which would be obvious to and are within the ordinary skill of the worker in the relevant art. In re Skrivan, 57 CCPA 1201, 427 F.2d 801, 166 USPQ 85, 88 (CCPA 1970).



 The decision of the examiner is reversed.









Saul I. Serota






Evelyn K. Merker






Arthur J. Steiner






FNa1. McGraw-Hill Encyclopedia of Science and Technology, Volume 14, page 160  (1971).






 A group of marine animals distantly related to the vertebrates and forming a subdivision (subphylum Tunicata, or Urochordata) of the Chordata. Three classes are usually recognized: Ascidiacea, the ascidians, or sea squirts: Thaliacea, the salps, doliolids, and pyrosomids; and Larvacea, the appendicularians, or Copelata. Approximately 2000 species are known. Some are planktonic but the majority are sessile, and most occur at the depths of less than 100 fathoms. Maximum dimensions of these animals seldom exceed a few inches. Definitive characteristics include (1) restriction of the notochord to the tail and posterior body of the larva (and of the adult of the class Larvacea); (2) absence of mesodermal segmentation; and (3) secretion of an outer covering or tunic about the body, usually containing some cellulose.



 Tunicates feed on minute plankton and organic detritus, which is carried into the pharynx by water currents resulting from ciliary or muscular activity. This material is trapped in mucus secreted by the endostyle, a glandular groove in the pharyngeal floor. The gut is usually differentiated into an esophagus, a stomach bearing one or more glandular structures, and an intestine. The intestine sometimes exhibits specialized regions, and digestion is extracellular. A partly open circulatory system is present. Blood is pumped by a tubular heart which periodically reverses its beat, thereby changing the direction of flow in all channels. In some species, high concentrations of vanadium, niobium, titanium, or chromium occur in the tissues. The brain in the adult is a solid dorsal ganglion associated with a neural gland that is sometimes homologized with part of the vertebrate pituitary gland. All forms are hermaphroditic, though male gonads may develop earlier than the ovaries. The eggs, often used in experimental embryological studies, undergo bilateral, determinate cleavage. A swimming tadpole larva, equipped with notochord, dorsal nerve cord, and sense organs, is produced in most species. A metamorphosis involving loss of the tail, notochord, and nerve cord is seen in Ascidiacea and Thaliacea, but not in Larvacea, which retain these structures. Some species develop into solitary adults; others undergo more or less alternate periods of sexual and asexual reproduction, and form aggregates or colonies by budding. Regenerative capacity is often marked.



  *3 Direct economic importance of tunicates is slight. Some forms are a nuisance as fouling organisms on ships and buoys. At least nine species are taken for human consumption, primarily in the Orient. See ANIMAL SYMMETRY; CHORDATA;  CLEAV.


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