Appeal No. 2000-1929
Application No. 08/019,297
3. The written description rejection
The examiner also rejected all of the claims under 35 U.S.C. § 112, first
paragraph, as being unsupported by an adequate written description. He
explained that
[t]here is no evidence in the specification other than the one
paragraph at page 21 to provide support for the claimed invention.
All of Appellant’s [sic] teachings are directed to making and using
the viral proteins, not antibodies or immune complexes. . . .
Appellant’s [sic] only written description is a short paragraph briefly
contemplating antibodies to p25 (see specification, page 21, last
paragraph). There is no indication that Appellant[s] contemplated
antibodies to other proteins, how to make and use immune
complexes, antibodies labeled with a detectable label, or specific
methods of making antibodies.”
Examiner’s Answer, page 8. The examiner concluded that the subject matter of
the instant claims “was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventor(s), at the
time the application was filed, had possession of the claimed invention.” Id.
“In order to satisfy the written description requirement, the disclosure as
originally filed does not have to provide in haec verba support for the claimed
subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320,
1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000). Nonetheless, the disclosure
must convey with reasonable clarity to those skilled in the art that the inventor
was in possession of the invention. See id. “Put another way, one skilled in the
art, reading the original disclosure, must immediately discern the limitation at
issue in the claims.” Id.
15
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: November 3, 2007