Appeal No. 2002-1358
Application No. 09/467,903
35 U.S.C. § 112, first paragraph
Claims 30-49 stand rejected under 35 U.S.C. § 112, first paragraph for lack of
written description and failing to reasonably convey to one skilled in the relevant art that
the inventor, at the time the application was filed, had possession of the claimed
invention.
The examiner argues (Answer, pages 4-5):
There is no support in the specification as originally filed for the
recitation of “antibody fragment” in claims 30, 35, 40 or 45. The scope of
the term “antibody fragment” encompasses compositions containing
fragments not disclosed in the specification (eg. such as Fv or Fd or
F(ab)2 ). There is no written description in the specification as originally
filed of the claimed conjugate or composition containing said conjugate
wherein the conjugate contains a “antibody fragment” per se. ... There is
also no support in the specification as originally filed for the recitation of
“F(ab')2“ in claims 34, 39, 44 and 49. The specification pages 11 and 12,
discloses the use of Fab’ derived from F(ab')2 for the preparation of the
claimed invention, but there is no disclosure of the use of F(ab')2 in the
claimed invention. The specification merely discloses the use of F(ab')2 to
prepare Fab’, wherein the Fab’ are then used in the claimed invention. ...
There is no written description in the specification as originally filed of the
claimed invention (eg. the claimed invention constitutes new matter).
The test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983). Furthermore, claim language must be analyzed “not in a
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