Appeal No. 2006-2417 Page 5
Application No. 09/200,791
156 F.3d 1154, 1158, 47 USPQ2d 1829, 1832 (Fed. Cir. 1998) (discussing
requirements of claiming benefit of priority date of earlier application under
35 U.S.C. § 120).
As appellants point out (Brief, page 6), this requires the disclosure in the
earlier application to reasonably convey to one of ordinary skill in the art that the
inventors possessed the later-claimed subject matter when they filed the earlier
application. See e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473,
1479, 45 USPQ2d 1498, 1502-1503 (Fed. Cir. 1998); Univ. of Cal. v. Eli Lilly and
Co., 119 F.3d 1559, 1567, 43 USPQ2d 1398, 1405 (Fed. Cir. 1997)2. Upon
consideration of the ‘894 patent, we find that ‘894 discloses (column 1, lines 4-7),
“[t]his invention relates to a method for reducing renal uptake of monoclonal
antibody fragments used for radioimmunodiagnosis (RAID), immunotherapy, and
radioimmunotherapy (RAIT).” ‘894 further discloses (column 1, lines 16-18), “[a]
major drawback to the use of radiolabeled antibody fragments for imaging and
therapy is the relatively high uptake and retention of radioactivity in the kidney.”
We note that this section of the ‘894 patent does not speak to proteins generally,
but instead is very specifically drawn to radiolabeled antibody fragments.
Regarding proteins generally, we find as appellants point out (Brief,
2 We recognize that appellants’ Reply Brief makes reference to these cases as well. Reply Brief,
pages 3-4.
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