Appeal No. 2006-0632 Παγε 4
Application No. 09/929,665
antibody.
Essentially, the examiner’s position is that “antibodies that ‘compete for binding’
to E99, J591, J415, and J533 . . . constitute a separate subgenus” that was not
expressly “recite[d] or reasonably contemplate[d]” in the specification as originally filed
(Answer, page 4). Further, the examiner asserts that the only relevant example in the
specification “reinforce[s] the idea that ‘non-competing’ antibodies are [ ] preferred” (id.,
page 8).
“The ‘written description’ requirement serves a teaching function, . . . in which the
public is given ‘meaningful disclosure in exchange for being excluded from practicing
the invention for a limited period of time.’” University of Rochester v. G.D. Searle & Co.,
Inc., 358 F.3d 916, 922, 69 USPQ2d 1886, 1891 (Fed. Cir. 2004) (citation omitted).
Another “purpose of the ‘written description’ requirement is . . . [to] convey with
reasonable clarity to those skilled in the art that, as of the filing date [ ], [the applicant]
was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). See also Enzo Biochem Inc. v. Gen-
Probe Inc., 296 F.3d 1316, 1329, 63 USPQ2d 1609, 1617 (Fed. Cir. 2002). The
requirement is satisfied when the specification “set[s] forth enough detail to allow a
person of ordinary skill in the art to understand what is claimed and to recognize that the
inventor invented what is claimed.” University of Rochester, 358 F.3d at 928, 69
USPQ2d at 1896. Whether or not a specification satisfies the requirement is a question
of fact, which must be resolved on a case-by-case basis (Vas-Cath, 935 F.2d at 1562-
63, 19 USPQ2d at 1116).
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