Interference No. 103,605
large genus of adducts is not sufficient to satisfy the written
description requirement as to a particular species or sub-genus;
even if a skilled artisan could contemplate and “write out” the
individual structures of each member of the genus.
Thus, in accordance with pertinent case law, we conclude
that Yamada’s three Japanese priority applications, whether taken
singly or in combination, fail to reasonably convey to persons
skilled in the art that, as of the filing dates thereof, Yamada
had possession of, i.e., had invented, a polypeptide having an
amino acid sequence resulting from the addition of two amino acid
residues from the precursor portion to the N-terminus of mature
hTNF, as specifically recited in Yamada claim 1. See The Regents
of the University of California v. Eli Lilly and Co., 119 F.3d
1559, 1566, 43 USPQ 2d 1398, 1404 (Fed. Cir. 1997); Fujikawa v.
Wattanasin, 93 F.3d 1551, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir.
1996); Forssmann v. Matsuo, 23 USPQ2d 1548, 1550 (Bd. Pat. App.
& Int. 1992); In re Ruschig, 379 F.2d 990, 995, 154 USPQ 118, 123
(CCPA 1967).
Consistent with the foregoing, it has been held that “one
cannot describe what one has not conceived.” See Fiers v.
Sugano, 984 F.2d 1164, 1171, 25 USPQ2d 1601, 1606 (Fed. Cir.
1993). Also, see Amgen, Inc. v. Chugai Pharmaceutical Co.
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