Appeal No. 2006-0352 Παγε 4
Application No. 09/929,546
67. The method according to claim 58, wherein the antibody is selected from the
group consisting of a monoclonal antibody and a polyclonal antibody.
68. The method according to claim 67, wherein the antibody is a monoclonal
antibody selected from the group consisting of an E99, a J415, a J533, and a J591
monoclonal antibody.
Claim 72 is representative of the subject matter that is the subject of this appeal:
72. The method according to claim 58, wherein the antibody or antigen binding
portion thereof competes for binding to prostate specific membrane antigen (PSMA)
with a monoclonal antibody selected from the group consisting of an E99, a J415, a
J533, and a J591 monoclonal antibody.
Essentially, the examiner’s position is that “antibodies that ‘compete for binding’
to E99, J591, J415, and J533 . . . constitute a separate subgenus” that was not
expressly “recite[d] or reasonably contemplate[d]” in the specification as originally filed
(Answer, page 4). Further, the examiner asserts that the only relevant example in the
specification “reinforce[s] the idea that ‘non-competing’ antibodies are [ ] preferred” (id.,
page 8).
“The ‘written description’ requirement serves a teaching function, . . . in which the
public is given ‘meaningful disclosure in exchange for being excluded from practicing
the invention for a limited period of time.’” University of Rochester v. G.D. Searle & Co.,
Inc., 358 F.3d 916, 922, 69 USPQ2d 1886, 1891 (Fed. Cir. 2004) (citation omitted).
Another “purpose of the ‘written description’ requirement is . . . [to] convey with
reasonable clarity to those skilled in the art that, as of the filing date [ ], [the applicant]
was in possession of the invention.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-
64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). See also Enzo Biochem Inc. v. Gen-
Probe Inc., 296 F.3d 1316, 1329, 63 USPQ2d 1609, 1617 (Fed. Cir. 2002). The
requirement is satisfied when the specification “set[s] forth enough detail to allow a
person of ordinary skill in the art to understand what is claimed and to recognize that the
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