Appeal 2007-0543
Application 10/023,182
other thirty-eight peptides listed in the specification are concerned, the Examiner
acknowledges that they “have HLA binding motifs, and are expected to bind to
HLA molecule[s]” (id.), but argues that they are not “adequate examples of the
claimed T cell epitopes” (id. at 6), because “one cannot predict that these peptides
also elicit sufficient T cell response” (id. at 5). The Examiner finds that “one of
skill in the art would reasonably conclude that Appellant[s] did not have
possession of the claimed genus . . . at the time the invention was made” (id. at 10).
We disagree with the Examiner’s rationale and conclusion. “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).
“[A]pplicants have some flexibility in the ‘mode selected for compliance’
with the written description requirement” (University of Rochester, 358 F.3d at
928, 69 USPQ2d at 1896), and it is well settled that actual reduction to practice is
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