Appeal No. 2006-2417 Page 7
Application No. 09/200,791
encoding nucleic acids.” Accordingly, appellants assert (id.), cases such as Lilly
and Amgen Inc. v. Chugai Pharmaceutical Co., Ltd. 927 F.2d 1200, 18 USPQ2d
1016 (Fed. Cir. 1991) “are not valid precedent for the written description question
addressed herein.” We disagree.
While the subject matter in Lilly was directed to genetic material, the
requirements of the statute applies to all types of invention. See Univ. of
Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 925, 69 USPQ2d 1886, 1893
(Fed. Cir. 2004) (“Regardless whether a compound is claimed per se or a
method is claimed that entails the use of the compound, the inventor cannot lay
claim to that subject matter unless he can provide a description of the compound
sufficient to distinguish infringing compounds from non-infringing compounds, or
infringing methods from non-infringing methods.”)
Whether or not an application adequately describes a claimed invention is
determined as of the application’s filing date. See Hyatt v. Boone, 146 F.3d
1348, 1354, 47 USPQ2d 1128, 1132 (Fed. Cir. 1998) (“[T]he purpose of the
description requirement is ‘to ensure that the inventor had possession, as of the
filing date of the application relied on, of the specific subject matter later claimed
by him.’”) For the reasons set forth above, we find our that the facts on this
record weigh in favor of the examiner – the antibody species disclosed in the
‘894 patent do not support the broader genus of any protein conjugate. As
discussed above, there is simply no disclosure in the ‘894 patent to suggest the
applicability of the disclosed methodology to anything other than antibody
conjugates or for use in any other application other than radioimmuno-therapy or
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