Appeal No. 2006-2568 Page 5
Application No. 09/744,866
The examiner argued that the disclosure in the specification at page 13,
lines 25-32, “positively recites the inclusion of a step comprising modifying the tumor
cells before passing a suspension of the cells through a screen,” but that “the mere
presence of a positive recitation is not basis for exclusion.” Examiner’s Answer, page 7.
In particular, the examiner argued that, unlike the situation in In re Johnson, 558 F.2d
1008, 194 USPQ 187 (CCPA 1977), Appellants’ original disclosure does not include a
description of the species Appellants wish to exclude. Examiner’s Answer, pages 8-9.
Appellants argue that the words “it is also possible” compel interpreting the
disclosure at page 13, lines 25-32, to mean that Appellants had in their minds the case
where the recited modifications are made and the case where the recited modifications
are not made. Appeal Brief, pages 4-5. In addition, Appellants argue that Working
Example 1, which “shows screening of unmodified disseminated tumor cells,” “makes it
clear” that the inventors had the second alternative in mind. Appeal Brief, page 5.
Compliance with the written description requirement is determined by whether
the disclosure shows possession to a person of ordinary skill in the art. Union Oil Co. of
California v. Atlantic Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232 (Fed.
Cir. 2000). We agree with Appellants that the words “it is also possible” in the
disclosure at page 13, lines 25-32, demonstrate that Appellants had possession of both
the case where the recited modifications are made and the case where the recited
modifications are not made. See In re Johnson, 558 F.2d at 1017-1019, 194 USPQ at
195-196, in which the disclosure of a genus, as well as species within that genus, was
held sufficient to support a claim to the genus minus the disclosed species. Thus, we
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