Appeal No. 2006-0352 Παγε 5
Application No. 09/929,546
inventor invented what is claimed.” University of Rochester, 358 F.3d at 928, 69
USPQ2d at 1896. Whether or not a specification satisfies the requirement is a question
of fact, which must be resolved on a case-by-case basis (Vas-Cath, 935 F.2d at 1562-
63, 19 USPQ2d at 1116).
Much has been said on both sides of this issue, but we agree with appellant that
the specification describes the disputed subgenus of antibodies, and that this “is not a
close case” (Reply Brief, page 1). The specification describes a “process [which]
involves providing a biological agent which . . . recognizes the extracellular domain of
prostate specific membrane antigen” (Specification, page 9). “Preferred biological
agents for use in the method . . . are antibodies or binding portions thereof, probes or
ligands” (id., page 10 ). The specification further describes four “particularly preferred”
monoclonal antibodies which bind the extracellular domain of PSMA (id., page 24).
Three of the antibodies, J591, J533, and E99, “interfere, compete, or block binding of
one another” to the same epitope on PSMA, but “do not block binding of [the fourth
antibody,] J415[,] and vice versa” (id., page 43). Moreover, the specification teaches
that “[s]uitable probes or ligands are molecules which bind to the . . . antigens identified
by the monoclonal antibodies of the present invention” (id., page 24), i.e., molecules
which bind the epitopes identified by J591, J533, E99 and J415.
Thus, the specification explicitly describes both competing and non-competing
antibodies, and also teaches that other biological agents that bind, or recognize, the
same sites identified by J591, J533, E99 and J415 are suitable for use in the claimed
method. While it is true that the specification does not explicitly state that other
antibodies are included among suitable “molecules which bind to the . . . antigens
identified by the monoclonal antibodies of the present invention,” we conclude that
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