Engvall urges that the affinity for the monoclonal antibodies and alphafeto protein
described in Example 1 of her specification are above 10 and therefore provide the written8
description required by § 112, ¶1, for the affinity limitation. Engvall states (Brief, p. 94):
A single example in an application that explicitly or inherently meets
every limitation of a claim is sufficient to support it. Limitations need
not be expressly set forth in haec verba. Binstead v. Littman, 242
F.2d 766, 113 USPQ 279, 282 (CCPA 1975); Kennecott Corp. v.
Kyocera International, Inc., 835 F.2d 1419, 5 USPQ2d 1194, 1198
(Fed. Cir 1987), cert. denied, 486 U.S. 1008, 100 L.Ed. 2d 198, 108
S.Ct. 1735 (1988).
While the second quoted sentence correctly states the law, Engvall cites no authority for the
first sentence with respect to the satisfying the written description requirement. While a reduction
to practice of a single embodiment within the scope of a generic count may be sufficient for the
purpose of priority in an interference, a patent applicant must have support for the full scope of the
claimed subject matter to meet the description requirement of 35 U.S.C. § 112, ¶ 1. Conservolite Inc.
v. Widmayer, 21 F.3d 1098, 1100, 30 USPQ2d 1626, 1628 (Fed. Cir. 1994) citing Squires v. Corbett,
560 F.2d 424, 435, 194 USPQ 513, 520 (CCPA 1977). As noted by the CCPA in Squires:
We conclude that for an applicant to have a right to copy a patent
claim he must have support for the full scope of the claim. This
conclusion rests on the recognition that the right to make a claim in a
pending application, even for purposes of interference, depends, as it
does with all pending claims, on compliance with the requirements of
35 USC 112, first paragraph. There is no other standard.
Thus, Engvall’s specification, as filed, must provide information which would lead the person having
ordinary skill in the art to the lower limit of the affinity constant of “at least about 10 liters/mole” 8
to satisfy 35 U.S.C. § 112, ¶ 1.
3. Engvall’s original specification and the lower limit for the affinity
constant of “about 10 liters/mole”8
There is nothing in Engvall’s original specification which provides express language or any
blaze marks indicating a preference or appreciation for any particular value of the affinity constant.
Nothing in the specification conveys that Engvall viewed an affinity of “at least about 10 liters/mole” 8
or any other magnitude of the affinity constant as being of any significance at all with respect to the
claimed invention. While the specification mentions and uses the word affinity, a review of the
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