Appeal 2007-4148
Application 09/148,012
and does not indicate whether this level of inhibition would inhibit
pregnancy if achieved in a mammalian subject.
Thus, while the Specification provides a working example describing
inhibition of SR-BI activity in vitro, it provides no working example of the
method defined by claim 1: inhibiting pregnancy or decreasing production
of steroids in a mammalian subject in vivo. The Specification also provides
inadequate guidance regarding what level of SR-BI inhibition is required to
inhibit pregnancy and what compounds can be administered to achieve the
required inhibition.
“Patent protection is granted in return for an enabling disclosure of an
invention, not for vague intimations of general ideas that may or may not be
workable. . . . Tossing out the mere germ of an idea does not constitute
enabling disclosure. While every aspect of a generic claim certainly need
not have been carried out by an inventor, or exemplified in the specification,
reasonable detail must be provided in order to enable members of the public
to understand and carry out the invention.” Genentech Inc. v. Novo Nordisk
A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
While the Specification does disclose a possible connection between
female fertility and SR-BI, it does not provide adequate guidance to enable
those skilled in the art to inhibit pregnancy by inhibiting SR-BI activity
without undue experimentation. We therefore agree with the Examiner that
the Specification does not provide an enabling disclosure in compliance with
35 U.S.C. § 112, first paragraph.
Appellant argues that the working examples in the Specification
support the instant claims, and that the Miettinen paper “showing restoration
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