Appeal No. 2004-1106 July 2004
Application 09/871,388 Page 7
III. Opinion
A. The legal standard
"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." In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
The written description requirement can be satisfied by showing that the disclosed
subject matter, when given its "necessary and only reasonable construction," inherently
(i.e., necessarily) satisfies the limitation in question. Kennecott v. Kyocera, 835 F.2d
1419, 1423, 5 USPQ2d 1194, 1198 (Fed. Cir. 1987).
B. Appellants' position
Appellants contend that support for an antibody or fragment thereof which
specifically binds one of the recited KUZ proteins but does not specifically bind bovine
MADM can be found at page 5, lines 20-24, 28-29 and 29-31 and at page 8, line 18
through page 10, line 8 (FF 14).
20. Specification pages 8 through 10 describe adapting known techniques of
producing antibodies or antibody fragments to a generic antigen to production of
antibodies or antibody fragments to a specific antigen, i.e., a KUZ protein, derivative or
analog (p. 8, ll. 18-19 and 31-32).
21. As noted by the examiner, there is no disclosure of antibodies which specifically
bind to the protein defined by any of SEQ ID NOS 2, 4, 6 and 8 but not to MADM
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