A disclosure that adequately identifies an invention by its known properties may be used to support later claims to undisclosed yet inherent properties. Here, for example, a protein described in a priority application in terms of a partial amino acid sequence and other biological characteristics was found to adequately support claims in a later filed patent directed to the full amino acid sequence. “Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites the invention’s inherent properties.” This would be a good case to consult and cite in response to a written description rejection predicated on undisclosed yet inherent properties.
Background / Facts: The patent on appeal here from rejection at the PTO is directed to a protein referred to as TBP-II. TBP-II binds to and neutralizes a protein associated with various immunological diseases. The priority applications from which the patent derives do not disclose the full N-terminus sequence of TBP as claimed in the patent. Instead, they disclose a partial N-terminus sequence, a protocol for obtaining the protein from its biological source, and additional properties of the protein, such as molecular weight, biological activity, and degradation characteristics when exposed to trypsin.
Issue(s): Whether a protein can be adequately described when a partial amino acid sequence is disclosed along with other biological characteristics.
Holding(s): Yes. “Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites the invention’s inherent properties. [] In this case, it is undisputed that TBP-II is the only protein with the same partial N-terminus sequence and additional traits disclosed in the [] application. [] Therefore, the [] application inherently discloses the remaining amino acids in the N-terminus sequence of TBP-II and serves as adequate written description support for the patent claiming TBP-II. It is not necessary for an application to disclose a protein’s complete N-terminus sequence in order to provide an adequate written description of that protein.”