Appeal 2006-3373
Application 09/919,504
clearly teaches polymers as a delivery system to introduce nucleic acid
sequences or compounds capable of altering nucleic acid sequence function
into cells and methods of delivering these compositions.” (Id.)
Lundsted, according to Appellants, was incorporated by reference in
accordance with MPEP §608.01(p) at page 15, lines 20-23, and page 17,
lines 12-18, thus it was incorporated by reference in its entirety (id. at 15).
As Lundsted discloses octablock copolymers, and as Lundsted discloses the
use of ethylene diamine as the base compounds, Appellants contend that
“the claims of the present application are entitled to a priority date of at least
October 15, 1993.” (Id.) Schmolka, Appellants assert, teaches octablock
copolymers including the octablock copolymers disclosed in instant Figure 4
(id.). Moreover, Appellants assert, other patents cite Schmolka for its
disclosure of octablock copolymers (id.).
To perfect their claim for priority under 35 U.S.C. § 120, and thus
antedate the teachings of the cited prior art, the ’271 application must
describe and enable one skilled in the art to make and use the full scope of
the presently claimed subject matter. See In re Scheiber, 587 F.2d 59, 62,
199 USPQ 782, 784 (CCPA 1978); Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991).
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue.
Nonetheless, the disclosure must . . . convey with reasonable
clarity to those skilled in the art that . . . [the inventor] was in
possession of the invention. Put another way, one skilled in the
art, reading the original disclosure, must immediately discern
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