Appeal No. 2004-1660 Page 5
Application No. 10/071,247
inventor possessed the invention at the time of the original filing. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111, 1115 (CAFC 1991) (“Adequate
description of the invention guards against the inventor’s overreaching by insisting that
he recount his invention in such detail that his future claims can be determined to be
encompassed within his original creation”). Stated differently, 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. “The written description requirement does not
require the applicant ‘to describe exactly the subject matter claimed, [instead] the
description must clearly allow persons of ordinary skill in the art to recognize that
[applicant] invented what is claimed.’” Union Oil Co. of Cal. V. Atlantic Richfield Co., 208
F.3d 989, 997, 54 USPQ2d 1227, 1232 (Fed. Cir. 2000) (citation omitted).
The examiner notes that the specification discloses “only three F-18-labeled
peptides, [and] there is a lack of a written description of all additional F-18-labeled
peptide[s] . . . , let alone all bispecific antibodies that bind[ ] to all tissue[s] and all F-
18-labeled peptide[s] for a method for detecting a tissue by positron emission
tomography” (Answer, page 7). The examiner believes that “[o]ne of skill in the art
would reasonably conclude that the disclosure fails to provide a representative number
of species to describe the genus[,] [t]hus, Applicant was not in possession of the
claimed genus” (Answer, pages 7-8).
We disagree. There is no dispute that peptide:antibody binding pairs, tissue
marker:antibody binding pairs, and bispecific antibodies are all well-known in the art. In
our view, one of ordinary skill in the art would readily understand that appellant, in
describing a method of making and using three specific F-18-labeled peptides, and a
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