Appeal No. 2004-1660 Page 4
Application No. 10/071,247
In the present case, the examiner focuses primarily on the breadth of the claims.
While we agree with the examiner that the claims are generic in their requirement for
bispecific antibodies with one arm directed against an unspecified target tissue, and the
other arm directed against an unspecified F-18-labeled peptide, frankly, we fail to see
the problem. The examiner does not appear to question the ability of one skilled in the
art to produce bispecific antibodies directed to any number of antigens (e.g., tissue
markers of interest or peptides-to-be-labeled), despite a certain recognized element of
unpredictability; nor does the examiner appear to question the ability of one skilled in
the art to use the protocol outlined in the specification to label any given peptide with F-
18. To the extent the examiner believes that the specification must “teach how to make
and use all bispecific . . . antibod[ies] . . . where one arm is specific for all target tissue
of the patient and the other arm is specific for all undisclosed F-18-labeled peptide[s]”
(Answer, pages 4-5), we note that no authority has been cited in support of this
requirement. On the contrary, “appellants are not required to disclose every species
encompassed by their claims even in an unpredictable art.” In re Angstadt, 537 F.2d
498, 504, 190 USPQ 214, 218 (CCPA 1976) (emphasis in the original).
In our view, the reasons given by the examiner in support of the enablement
rejection do not begin to provide an adequate basis to question the adequacy of
appellant’s disclosure. The rejection of the claims for lack of enablement under 35
U.S.C. § 112, first paragraph, is reversed.
Written Description
Compliance with the written description provision of 35 U.S.C. § 112, first
paragraph requires sufficient information in the original disclosure to show that the
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