Appeal No. 2006-2575
Application No. 10/025,567
76 USPQ2d 1078, 1086 (Fed. Cir. 2005). Rather, in evaluating whether the
specification provides an adequate written description for generic claims to
biological subject matter, one must look to “a variety of factors, such as the
existing knowledge in the particular field, the extent and content of the prior
art, the maturity of the science or technology, the predictability of the aspect
at issue, and other considerations appropriate to the subject matter.” Id. at
1359, 76 USPQ2d at 1085.
Thus, “[i]t is not necessary that every permutation within a generally
operable invention be effective in order for an inventor to obtain a generic
claim, provided that the effect is sufficiently demonstrated to characterize a
generic invention.” Id.
In concluding that the Specification does not demonstrate possession
of the claimed subject matter, the Examiner has not, in our view, sufficiently
considered the state of the art. As discussed supra, both the Specification
and Krause teach that protein-wasting microorganisms were known in the
art, and that one route of protein loss is the microorganisms’ conversion of
protein to ammonia in the host’s digestive tract. (Specification 1; Krause
815, left col.)
As also discussed supra, Stolle provides an extensive list of digestive
tract pathogens to which antibodies can be raised in chickens. (Stolle, col. 5,
ll. 1-35.) Tokoro and Yokoyama also disclose the preparation, from chicken
eggs, of antibodies having binding specificity sufficient to inhibit targeted
microorganisms within the digestive tract. (Tokoro, col. 12, line 4, through
15
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: September 9, 2013