Appeal No. 2001-0407 Page 12
Application No. 08/460,215
application.1 “Enablement is determined as of the effective filing date.” Plant
Genetic Systems, N.V. v. DeKalb Genetics Corp., No. 02-1011, 2003 U.S. App.
LEXIS 447, at *8 (Fed. Cir. Jan. 13, 2003) (citing In re Hogan, 559 F.2d 595, 603,
194 USPQ 527, 535-36 (CCPA 1977)). Later-published references generally
cannot be relied upon to support enablement. “It is an applicant’s obligation to
supply enabling disclosure without reliance on what others may publish after he
has filed an application on what is supposed to be a completed invention. If he
cannot supply enabling information, he is not yet in a position to file.” In re Glass,
492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA 1974) (emphasis in original).
The exceptions to this rule concern the use of a later publication to provide
evidence of an earlier state of the art. See Hogan, 559 F.2d at 605 n.17, 194
USPQ at 537 n.17. In this case, Appellants have not explained how the later-
published papers show evidence of the state of the art of gene therapy in late
1994 or early 1995. We therefore have not considered any of the references
cited by Appellants that were published after January 31, 1995.
Appellants’ evidence of the state of the art as of January 31, 1995, does
not support enablement of the instant claims. In their brief, Appellants cited
several papers as “[s]upport for operability of the invention.” Appeal Brief, page
5. One of the papers was published in 1993; however, the paper is simply an
announcement of the formation of “the latest gene therapy company that has
sprung up to tackle cancer.” The formation of a cancer-treatment gene therapy
1 According to Appellants, the instant application is a divisional of application 08/381,520, filed
January 31, 1995, which was a continuation-in-part of application 08/323,443, filed October 12,
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