Appeal No. 2004-1259
Application No. 09/832,355
37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366,
1373, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re Wertheim, 541 F.2d 257, 262-65,
191 USPQ 90, 96-98 (CCPA 1976).
Our reviewing court has held in Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562,
19 USPQ2d 1111, 1116 (Fed. Cir. 1991) that
[a] fairly uniform standard for determining compliance with the "written
description" requirement has been maintained throughout: "Although [the
applicant] does not have to describe exactly the subject matter claimed, ...
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) (citations
omitted). "[T]he test for sufficiency of support in a parent application is
whether the disclosure of the application relied upon 'reasonably conveys
to the artisan that the inventor had possession at that time of the later
claimed subject matter.'" Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d
1570, 1575, 227 USPQ 177, 179 (Fed. Cir. 1985) (quoting In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)).
Upon our review of the specification, particularly at paragraph [0063], we find the
specification reasonably conveys to the artisan that the inventor had possession at the
time the application was filed. The examiner argues there is no disclosure of the now
claimed “at least about 60%, which is equivalent to '60% or more', which would include
species with greater than 70%, the highest number recited.” We disagree.
The specification, page 27, numbered paragraph [0063], indicates that the
HBNF-MK second peptide portion can include any suitable HBNF-MK peptide or
fragment. Preferably the HBNF-MK is the naturally occurring HBNF. Thus, it would
reasonably appear from the specification that the full length HBNF peptide is
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