Appeal 2006-3020
Application 10/109,374
derivatize Dunn’s chelators to Dereu’s LTB4 receptor binding molecules,
with the expectation of “imaging sites of infection and/or inflammation.”
(See Answer 6-7.)
PRINCIPLES OF LAW
During examination proceedings, “claims are given their broadest
reasonable interpretation consistent with the specification. [This]
proposition ‘serves the public interest by reducing the possibility that claims,
finally allowed, will be given broader scope than is justified,’ . . . and it is
not unfair to applicants, because ‘before a patent is granted the claims are
readily amended as part of the examination process’. . . .” In re Hyatt,
211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000) (internal
citations omitted).
“Claims found in a later-filed application are entitled to the filing date
of an earlier application if, inter alia, the disclosure in the earlier application
provides an adequate written description of the later-filed claims under
35 U.S.C. § 112, ¶ 1.” In re Curtis, 354 F.3d 1347, 1351, 69 USPQ2d 1274,
1278 (Fed. Cir. 2004). It follows, “disclosure of a species may be sufficient
written description support for a later claimed genus including that species.”
Bilstad v. Wakalopulos, 386 F.3d 1116, 1124, 72 USPQ2d 1785, 1791 (Fed.
Cir. 2004). However, “if the art is unpredictable, then disclosure of more
species is necessary to adequately show possession of the entire genus.” Id.
at 1125, 72 USPQ2d at 1792.
Claims defining the invention with functional terms are not
necessarily indefinite under § 112, ¶ 2:
[T]here are in reality only two basic grounds for
rejecting a claim under § 112. The first is that the language
used is not precise and definite enough to provide a clear-cut
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