the count is sufficient for priority benefit. Hunt v. Treppschuh, 523 F.2d 1386, 1389, 187 USPQ
426, 429 (CCPA 1975). Count 2 includes ‘611 claims 53 and 55. If Glaxo has failed to show
that ‘611 claims 53 and 55 are unpatentable based on a lack of written description, then Glaxo
has also failed to show that Cabilly’s ‘419 application lacks written description for even a single
embodiment within the scope of Count 2.
Whether the specification contains a written description of the claimed invention is a
factual inquiry. Utter v. Hiraga, 845 F.2d 993, 998, 6 USPQ2d 1709, 1714 (Fed. Cir. 1988).
The applicants’ specification must convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, the applicants were in possession of the invention. Vas - Cath Inc. v.
Mahurkar , 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). An objective
standard for determining compliance with the written description requirement is, “does the
description clearly allow persons of ordinary skill in the art to recognize that the inventor
invented what is claimed.” In re Gosteli , 872 F.2d at 1012, 10 USPQ2d at 1618.
Glaxo does not argue that the ‘419 application fails to provide an enabling disclosure for
an embodiment within the scope of Count 2 (FF 41).18
According to Glaxo, its arguments are supported by the testimony of Dr. Youle and
Dr. Vitetta. The difficulty we have with Glaxo’s position in its preliminary motions 3 and 5, is
that Glaxo has failed to direct us to any specific portions of Dr. Youle’s or Dr. Vitetta’s
testimony (FF 49 and 57) . Therefore, we are left to speculate as to what portions of the
testimony Glaxo is relying upon to support its arguments. It is not our role to scour the
18 Glaxo does argue that Cabilly’s ‘611 application fails to provide an enabling
disclosure in Glaxo preliminary motion 10. Glaxo preliminary motion 10 is denied for reasons
set forth below.
-33-
Page: Previous 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 Next
Last modified: November 3, 2007