Appeal No. 2004-1736 Page 4
Application No. 09/243,008
possession of the claimed invention. As the claims stand or fall together, see
Appeal Brief, page 5, we focus our analysis on claim 44.
According to the rejection, “[a]pplicant has no support in the originally filed
claims or specification for the genus phrase language ‘an intracellular domain
that does not signal to said cell to destroy a receptor-bound target cell or
receptor-bound target infective agent,’ present in amended base claims 44 and
79.” Examiner’s Answer, page 3.
As noted by our reviewing court, the Court of Appeals for the Federal
Circuit,
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba
support for the claimed subject matter at issue. Nonetheless, the
disclosure must convey with reasonable clarity to those skilled in
the art that the inventor was in possession of the invention. Put
another way, one skilled in the art, reading the original disclosure,
must immediately discern the limitation at issue in the claims. That
inquiry is a factual one and must be assessed on a case-by-case
basis.
Purdue Pharma v. Faulding Inc., 230 F.2d 1320, 1323, 56 USPQ2d 1481, 1483
(Fed. Cir. 2000) (citations omitted) (emphasis added). We agree with appellants
that the disclosure as originally filed reasonably conveys to one skilled in the art
that the inventor(s), at the time the application was filed, had possession of the
claimed invention.
Appellants cite page 48 of the specification, lines 31-33, which describes a
chimera that possesses a transmembrane domain joined to an intracellular
domain of only three amino acids, wherein the chimera is capable of signaling
through its transmembrane domain. See Appeal Brief, page 10. Appellants also
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