Interference 102,728
a. Written description
In order to obtain benefit, for purposes of priority, the Brake ‘325 Application
“must convey with reasonable clarity to those skilled in the art that, as of the filing date
sought,” Brake was in possession of the invention defined by the count. Cf. Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Singh
maintains that the APJ erred in according benefit to Brake. However, we agree with
Brake that at least two sections of the ‘325 Application (a.k.a. Brake 1) provide
adequate written descriptive support of an invention within the scope of the count; viz.,
pp. 3-4, and original claim 5.12 Paper No. 15, pp. 6-7 and 9-10.
Turning first to the compound [L-(R-S-(GAXYCX)n - Gene *)y] set forth on page 4,
line 21, of the ‘325 Application and comparing it to the compound set forth in Count 1
[5N - L-S-Gene*], we find the following.
The count requires that the DNA construct described therein comprise a
sequence wherein “L” encodes a Saccharomyces "-factor leader sequence recognized
by a yeast host for secretion. To that end, we find that the Brake 1 specification
discloses that the “L” embodiment encodes a leader sequence providing for secretion of
the mature protein encoded by Gene*. The ‘325 Application, p. 4, lines 24-26. The
Brake 1 specification further discloses that “[o]f particular interest” is the
Saccharomyces "-factor leader sequence. Id., lines 33-34. Thus, we find, and indeed
12 Original claims are part of the written description of an invention. In re Koller,
613 F.2d 819, 823, 204 USPQ 702, 706 (CCPA 1980); In re Gardner, 475 F.2d 1389,
1391, 177 USPQ 396, 397 (CCPA 1973).
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