Wattanasin, 93 F.3d 1559, 39 USPQ2d 1895 (Fed. Cir 1996) for support of its position that the
Cabilly applications did not provide the appropriate “blaze marks” to direct one to the claimed
subject matter or even to an embodiment within the scope of Count 2 (Paper 49 at 14-17 and
Paper 51 at 22-23).
In both Ruschig and Fujikawa, written description was found to be lacking for
compounds that were not specifically disclosed even though the compounds could be arrived at
by making selections within the genus of compounds disclosed. The situations presented in
Ruschig and Fujikawa appear to be significantly different than the situation before us. For
example, in Ruschig, the applicant described a very broad genus of compounds but provided no
specific disclosure of the compound claimed. In Fujikawa, a party sought to add a count to a
narrow sub-genus of compounds. The narrower sub-genus could be arrived at only by picking
and choosing particular moieties at various positions within those disclosed. The Fujikawa
decision noted that the disclosure did not provide blaze marks as to what subject matter was of
particular interest. Fujikawa, 93 F.3d at 1905, 39 USPQ2d at 1571. In contrast, the Cabilly
applications specifically disclose that within multicellular organisms hosts, interest has been
“greatest in vertebrate cells”. (Exh. 2103 at 18:1-10). Cabilly describes CHO cell lines as
“useful host [vertebrate] cell lines” for antibody expression in vertebrate cells (FF 48). Only
seven other vertebrate cell lines are specifically disclosed. Thus, Glaxo has not shown that the
Cabilly applications did not provide adequate blaze marks to direct one to use CHO cells as hosts
for antibody expression. Furthermore, the Cabilly applications recognize that a mammalian cell
would be expected to glycosylate an antibody it expresses (FF 47).
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