Appeal No. 93-2460
Application No. 07/590,647
It is well established that § 112, first paragraph, requires
that the scope of the claims must bear a reasonable correlation
to the scope of enablement provided by the specification. In re
Fisher, 427 F.2d at 839, 166 USPQ at 24. The court recognizes
that patent applicants are not required to disclose that which is
well known in the art, however, the specification must “teach6
those of ordinary skill how to make and use the invention as
broadly as it is claimed.” In re Vaeck, 947 F.2d at 496,
20 USPQ2d at 1445. The court has cautioned that “[i]t is the
specification, not the knowledge of one skilled in the art, that
must supply the novel aspects of an invention in order to
constitute adequate enablement.” Genentech, Inc. v. Novo Nordisk
A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997).
To that end, we turn to the description of maize protoplasts
on pp. 66-68 of the specification. As we understand it, the
teachings in the specification are prophetic with respect to the
production of transgenic maize plants which express the claimed
EPSPS variant. Thus, given the problems of making transgenic
cereals as described by Potrykus, it is not clear whether the
6 See, e.g., Hybritech, Inc. V. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1385, 231 USPQ 81, 94 (Fed. Cir. 1986), cert.
denied, 480 U.S. 947 (1987).
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