An application need only reasonably convey to one skilled in the art that the inventor had possession of at least one embodiment that meets the claim limitations at issue to satisfy the written description requirement of 35 U.S.C. § 112(a). Conflicting descriptions that encompass alternative embodiments do not defeat written description support per se.
Background / Facts: The application on appeal here from the PTO as part of an interference proceeding relates to drugs for treatment of spinal nerve injuries, such as those associated with herniated discs. The claims—copied from another application to provoke the interference—recite methods of inhibiting nerve inflammation via the “local administration” of a monoclonal antibody to the site of an affected nerve. Although the application clearly discloses “local” administration, it describes “local” as including “perispinal” administration of medication near the site of injury followed by diffusion or travel of the medication to the site of injury.
Issue(s): Whether the application’s description of “local” administration in a manner that encompasses embodiments that would not fit within the PTO’s claim construction, which requires administration “directly to” the site of injury and excludes any form of administration that involves travel or diffusion of the inhibitor, renders the claims at issue unpatentable for lack of written description.
Holding(s): No. “While the ‘perispinal’ administration discussed in the [] application certainly covers more than just local administration techniques, this does not render all perispinal techniques non-local. Some techniques may be local, others may not. The [] application need only reasonably convey to one skilled in the art that [the inventor] had possession of at least one embodiment that meets the Board’s construction of local administration.”