Interference 105,039 Paper No. 28
Andree v. Klintz Page 15
proceeding as to Count 1, the interference would be terminated as
to Count 1.
The next critical issue is whether Andree has established a
prima facie case that Klintz lacks an adequate written
description of the diazo-intermediate compounds covered by
Klintz's claim 56. If Klintz lacks an adequate written
description of those particular diazo compounds, it is not
entitled to a claim to those compounds. Again, it would follow
that the interference was improvidently declared as to Count 2,
and the proceeding would be terminated, as no useful purpose
would be served by prolonging the proceeding as to Count 2.
On the other hand, if Klintz has provided an adequate
written description of the compounds covered by claims 53-56,
Andree's claimed subject matter would be anticipated, and any
evidence of unexpected results would be irrelevant. In that
case, the interference would proceed with both counts.
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support of the claimed subject matter. 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 any person skilled in the art that the
inventor was in possession of the invention. Id. In other
words, one skilled in the art, reading the original disclosure,
must immediately discern the limitations at issue in the claims.
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