Appeal No. 1999-1256
Application No. 08/333,076
differentiation culture medium in the presence of every agent which promotes
differentiation of the embryonic stem cells into every desired cell type.”); and page 3
(“[I]t is not necessary that Applicants culture embryonic stem cells in the presence of
every agent and every medium which would promote differentiation of the embryonic
stem cells into every desired cell type.”).
Appellants analogize the instant claims to an invention “directed to the culture
conditions for expression of recombinant protein in a certain cell.” Page 2, second full
paragraph. They argue that, in such a case, “the inventor need not enable one skilled in
the art to express a wide variety of proteins in order to be entitled to coverage of the
inventive culture conditions for expression.” Id.
To the extent that Appellants urge that the board applied an incorrect standard of
enablement to the claims on appeal, we disagree. The appropriate legal standard for
determining enablement was discussed and applied on pages 7 -8 of the decision
entered July 30, 2001, which states:
The specification discloses no agents that promote differentiation of
embryonic stem cells into cell types other than neuronal cells and muscle
cells. In addition, the specification states that the prior art does not
disclose any agents that promote differentiation of embryonic stem cells
into a particular cell type. See page 2 (“Differentiation of stem cells into a
homogeneous population, however, has not been achieved.”).
Thus, the specification lacks working examples or detailed guidance
concerning the range of differentiation-promoting agents encompassed;
the scope of the claims encompasses using any differentiation promoting
agent to produce any type of cell; the prior art provides no guidance
regarding producing a specific cell type from embryonic stem cells; and
neither the prior art nor the specification provides any basis on which to
predict what type of cell will result from treatment with a given agent.
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