This amendment is made for the purpose of provoking an interference
between the present application and David et al U.S. Patent No.
4,376,110.
Engvall Application 06/539,754, Paper 18, p. 8. Claims 8-27 were said to differ from claims 28-45
solely in the absence of the recitation of the “10 liters per mole limitation in the latter claims.”8
Engvall Application 06/539,754, Paper 18, p. 8. The examiner rejected the claims including the
affinity constant limitation, claims 8-27, under 35 U.S.C. § 112, ¶ 1. The examiner found that the
specific minimum affinity constant limitation present in each claim was not supported by Engvall’s
written description. Engvall Application 06/539,794, Paper 19, p. 2. The examiner held that the
remaining claims were unpatentable over the prior art. Engvall Application 06/539,754, Paper 19,
p. 2-3. The remaining claims, all of which lacked the specific affinity limitation were rejected over
prior art. Engvall Application 06/539,754, Paper 19, p. 4. With respect to the written description
rejection the applicant submitted a declaration by Asta Bergland to show that the affinity constant for
the antibodies used in Engvall’s example 1 was at least 10 liters per mole. The amendment stated:10
In conclusion, the declaration shows the Example 1 of the subject
patent application discloses antibodies having an affinity constant
which are higher than the minimum value of 10 liters per mole given8
in claim 1 of U.S. Patent No. 4,376,110 to David.
Engvall Application 06/539,754, Paper 22, p. 2. The examiner was apparently convinced because
subsequently the application was forwarded to this board for declaration of an interference.
Interference Initial Memorandum, Interference 101,769, Paper 1.
2. David’s preliminary motion
This interference was declared on April 8, 1987, between Engvall and David and a third
party, Gallati et al. During the preliminary motions period David filed a motion for judgment under
37 CFR § 1.633(a) asserting that Engvall’s claims 8 to 27 were unpatentable to Engvall under 35
U.S.C. § 112, ¶ 1. David asserted that Engvall’s specification did not include a written description
of the specific minimum affinity constant limitation present in those claims. Paper 32, pp. 8-18.
David also asserted that, as the copier of claims, Engvall had the burden of showing descriptive
support for the copied subject matter by clear and convincing evidence. David’s motion relied upon
a then recently decided case, Martin v. Mayer, 823 F.2d 500, 505, 3 USPQ2d 1333, 1337 (Fed. Cir.
1987). Paper 32, pp. 9-10. David argued that Engvall’s specification lacked literal support for the
9
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007