Appeal No. 2004-1823 Page 8
Application No. 09/148,012
alter lipoprotein, LDL, HDL or cholesterol levels in any mode, including altering SR-BI
expression or binding of SR-BI to high density lipoprotein.
In considering this issue we note:
[t]he question is not whether a claimed invention is an obvious variant of
that which is disclosed in the specification. Rather, a prior application itself
must describe an invention, and do so in sufficient detail that one skilled in
the art can clearly conclude that the inventor invented the claimed
invention as of the filing date sought...It is not sufficient for purposes of the
written description requirement of Section 112 that the disclosure, when
combined with knowledge in the art, would lead one to speculate as to
modifications that the inventor might have envisioned, but failed to
disclose.
Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966
(Fed. Cir. 1997). At best, one may intuit or think it obvious that having generated
infertile SR-BI knock out female mice, the effect may be reversible if SR-BI function is
restored. However, that is not the test. Even it that was the test, claim 1 on appeal is
not directed to methods involving affecting SR-BI function. It is much broader in scope.
In response to the examiner’s rejections, appellant relies upon Miettinen.1
Present appellant Monty Krieger is listed as a co-author in Miettinen. We have
considered Miettinen and find that it is not relevant since it was published in 2001, after
the September 4, 1998, filing date of this application. Furthermore, even if Miettinen is
to be considered in determining the patentability of the claims, if anything, it supports
our new ground of rejection since Miettinen states:
It is estimated that for 10-20% of women with infertility problems, the
underlying causes are unknown. We are not aware of any reports
1 Miettinen et al. (Miettinen), “Abnormal lipoprotein metabolism and reversible
female infertility in HDL receptor (SR-BI)-deficient mice,” The Journal of Clinical
Investigation, Vol. 108, No. 12, pp. 1717-1722 (2001)
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