ampicillin. It was not necessary, therefore, for Silvestri to prove express recognition of all of the
“language” of the count because he proved he had actual possession of the specific compound that
constituted the subject matter of the count and recognized the existence of that new composition.
The court’s conclusion was consistent with the long standing principle that a chemical compound and
all of its properties are one and the same thing. In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51
(CCPA 1963).
The facts here are substantially different than in Silvestri. Silvestri did not prove recognition
and appreciation of two limitations of the count: (1) greater storage-stability than hydrated ampicillin
and (2) a molecular weight of about 349. In concluding that Silvestri had actually reduced the
invention to practice, the CCPA recognized this lack of proof but noted that the properties “add
nothing to the count definition beyond that determined by the water content and infrared
spectrograph.” 496 F.2d at 599, 181 USPQ at 709. In other words, the references to storage-
stability and molecular weight added information about the subject matter of the count, ampicillin,
but did not change the scope of that subject matter. No subject matter was added or deleted from
the count definition by the addition of the reference to storage-stability and molecular weight. With
respect to the subject matter of this interference, the limitation “at least about 10 liters/mole” does8
not merely add further information. It effects the scope of the subject matter of the count. It
eliminates from the subject matter of the count those monoclonal antibodies which have affinity
constants for the antigen of interest of less than about 10 liters/mole. It is necessary, therefore, for8
Engvall to prove a contemporaneous recognition and appreciation that both monoclonal antibodies
used in the alleged actual reductions to practice had an affinity constant of at least about 108
liters/mole.
We also note that Engvall, in arguing that a conception of the use of “high affinity”
monoclonal antibodies is close enough, is, in effect, trying to amend the subject matter of the
interference without filing an appropriate preliminary motion. Engvall is, in effect, trying to amend
the count to read “employing monoclonal antibodies having a high affinity for the antigenic substance
for each of said labeled antibody and said antibody bound to a solid carrier.” The appropriate course
of action for Engvall would have been to file a preliminary motion to amend the subject matter of the
interference by substituting a count having the appropriate generic language. And Engvall had the
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