Appeal No. 1997-2528
Application No. 07/810,908
which is disclosed in the specification. Rather, a prior application itself
must describe an invention, and do so in sufficient detail that one skilled in
the art can clearly conclude that the inventor invented the claimed
invention as of the filing date sought. . . [A]ll that is necessary to satisfy
the description requirement is to show that one is “in possession” of the
invention . . . One shows that one is “in possession” of the invention by
describing the invention, with all its claimed limitations, not that which
makes it obvious. . . Although the exact terms need not be used in haec
verba, . . . the specification must contain an equivalent description of the
claimed subject matter. (Citations omitted).
. . .
It is not sufficient for purposes of the written description requirement of
Section 112 that the disclosure, when combined with knowledge in the art,
would lead one to speculate as to modifications that the inventor might
have envisioned, but failed to disclose. Each application in the chain must
describe the claimed features.
The question then, is whether appellants have done so in the parent, grandparent and
priority applications.
Clavel3 teaches using HIV-2 cell lysates to radioimmuno-precipitate anti-HIV-2
antibodies from patient sera. Clavel discloses that antigens from LAV-1 and LAV-2 can
be used for seroepidemiological studies, including envelop protein. Clavel, page 345,
column 1. Clavel is proper prior art to the present application because the parent cases
of the present application include no written description of all of the polypeptides within
the scope of the claimed invention. We find that the disclosure of parent application
Serial No. 06/835,228, U.S. Patent No. 4,839,288, describes, at best, the claimed
polypeptides polymerase, Q protein, Env, and F protein (figure 1), and fails to describe
3 The Clavel publication is authored by a different inventive entity than the
claimed invention.
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