Appeal No. 2006-2568 Page 6
Application No. 09/744,866
conclude that the description of modifications at page 13 provides adequate written
description to exclude the recited modifications.
The examiner also argued that, even if the disclosure at page 13, lines 25-32,
was sufficient to support “a negative limitation requiring the disseminated tumor cells not
be modified prior to passing the fluid through the screen,” the disclosure would not
support the negative limitation recited in claims 24 and 28. Examiner’s Answer,
pages 11-12. In particular, the examiner argued that the disclosure “would not be
sufficient to support a claim requiring the disseminated tumor cells not be modified to
any extent by any of the means now recited in the present claims, such as antibodies.”
Examiner’s Answer, page 12. In addition, the examiner argued that “it is a violation of
the written description provision not to include in that recitation the further alternative
proviso that the disseminated tumor cells are not modified ‘by inducing other defined
states.’” Examiner’s Answer, page 13.
Appellants argue that the phrase “‘other defined states’ was left out to obviate the
possibility of an indefiniteness rejection. In any event, the written description
requirement doesn’t require applicant to recite in the claims all of what is at page 13,
lines 25-32.” Reply Brief, page 3.
We agree with Appellants that there is no requirement that the claims exclude all
of the modifications recited at page 13, lines 25-32. As noted in In re Johnson, “[t]he
notion that one who fully discloses, and teaches those skilled in the art how to make
and use, a genus and numerous species therewithin, has somehow failed to disclose,
and teach those skilled in the art how to make and use, that genus minus two of those
species, and has thus failed to satisfy the requirements of §112, first paragraph,
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