Appeal No. 94-1483
Application No. 07/695,141
throughout its scope without undue experimentation. The
specification does not provide sufficient guidance explaining
how such hypothetical person could make and use other
polypeptides or nucleic acid sequences within the scope of the
claims on appeal. As set forth in Genentech Inc. v. Novo
Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed.
Cir. 1997):
Tossing out the mere germ of an idea does not
consti-tute 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.
The facts in this case are similar to those reported in
Amgen Inc. v. Chugai Pharmaceutical Co., 927 F.2d at 1213-14,
18 USPQ2d at 1027 where the court determined that the
disclosure under review did not provide adequate support for
"Amgen's desire to claim all EPO gene analogs." The court
observed that "Amgen has claimed every possible analog of a
gene containing about 4,000 nucleotides, with a disclosure
only of how to make EPO and a very few analogs." Here,
appellants teach how to make only one soluble, single chain
polypeptide comprising a Ti $ subunit fragment joined to a Ti
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