Appeal No. 2002-1358
Application No. 09/467,903
The written description requirement serves "to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific subject
matter later claimed by him; how the specification accomplishes this is not material." In
re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to meet the
written description requirement, the appellants do not have to utilize any particular form
of disclosure to describe the subject matter claimed, but "the description must clearly
allow persons of ordinary skill in the art to recognize that [he or she] invented what is
claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989).
Put another way, "the applicant must . . . convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he or she was in possession of the
invention." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991). Finally, "[p]recisely how close the original description must come
to comply with the description requirement of section 112 must be determined on a
case-by-case basis." Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470
(Fed. Cir. 1995) (quoting Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116).
Upon review of the specification as filed, in our view, the specification, when read
in the eyes of one of ordinary skill in the art, as evidenced by Wright and Singhal,
provides a sufficient description to allow persons of ordinary skill in the art to recognize
that appellants invented what is claimed, antibody fragments including Fab' and F(ab')2.
While the examiner is correct in that the claim terminology “antibody fragment” does not
literally appear in the specification as filed, the originally filed specification does
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