Appeal No. 2006-2575
Application No. 10/025,567
IgM from chickens’ eggs bind tightly to the adherins of invading
microorganisms to prevent the microorganisms from adhering to the
digestive tract of the host organisms, and how the albumin from the eggs
protects the antibodies’ binding activity. (Id. at 17-18.)
We will reverse this rejection. We first note that the Examiner
improperly included claims 3, 5, 12-21, and 24-29 in this ground of
rejection. Rather than reciting a broad genus, these claims recite
compositions targeted to the exact microorganisms conceded by the
Examiner as being described. (Answer 8 (“Other [than] the specific
microbial adherence inhibitor in the form of IgY that inhibits the specific
colony forming bacteria P. anaerobius, C. sticklandii, C. aminophilium, E[.]
coli, Listeria, [and] Salmonella from adhering to the rumen or digestive
track of food animal, there is inadequate written description about the
microbial adherence inhibitor . . . .”).) Thus, the rejection of these claims is
inconsistent with the Examiner’s own reasoning.
Turning to the remaining claims, the written description requirement
obliges an applicant to “convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, he or she was in possession of the
invention. The invention is, for purposes of the ‘written description’ inquiry,
whatever is now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
The Federal Circuit has cautioned that generic claims involving
immune responses are not invalid for lack of written description merely
because “success is not assured.” Capon v. Eshhar, 418 F.3d 1349, 1360,
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