Appeal No. 2005-1442 Page 6
Application No. 09/734,786
In re Cortright, 165 F.3d 1353, 49 USPQ2d 1464 (Fed. Cir. 1999), is instructive.
In Cortright, the applicant claimed a method of “treating scalp baldness with an
antimicrobial to restore hair growth.” Id. at 1355, 49 USPQ2d at 1465. The Board
reversed a rejection for lack of utility, but entered a new rejection for lack of enablement,
on the basis that “restor[ing] hair growth” required returning the user’s hair to its original
state (a full head of hair). See id. “Because Cortright’s written description discloses
results of only ‘three times as much hair growth as two months earlier,’ ‘filling-in some,’
and ‘fuzz,’ the board reasoned, it does not support the breadth of the claims.” Id. at
1358, 49 USPQ2d at 1467.
The court disagreed with the Board’s claim interpretation, holding that “one of
ordinary skill would construe this phrase [restoring hair growth] as meaning that the
claimed method increases the amount of hair grown on the scalp but does not
necessarily produce a full head of hair.” Id. at 1359, 49 USPQ2d at 1468. The court
concluded that the claims, so construed, were enabled. Id.
As with the present claims, the claims in Cortright encompassed a method of
obtaining results that might be difficult to achieve: here, therapeutically effective gene
therapy; in Cortright, complete restoration of hair growth. However, as in Cortright, the
present claims do not require that particular result: the present claims require only
introducing or delivering a nucleic acid; Cortright’s claims required only some restoration
of hair growth.
The court in Cortright did not dispute the Board’s conclusion that completely
restoring hair growth using Bag Balm® would require undue experimentation. See id. at
1357, 49 USPQ2d at 1467. The court nonetheless concluded that the claimed method
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