Appeal No. 94-3255
Application 07/673,264
by the claims in a predictable manner? Or are the appellants
merely offering an “invitation to experiment” to those skilled
in the art to perform various mutagenesis techniques and to
determine for themselves whether they have obtained an
auxotrophic mutant having the claimed characteristics? See
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 constitute an
enabling disclosure”). Also, In re Scarbrough, 500 F.2d 560,
566, 182 USPQ 298, 302 (CCPA 1974)(“It is not enough that a
person skilled in the art, by carrying on investigations along
the line indicated in the instant application, and by a great
amount of work eventually might find out how to make and use
the instant invention. The statute requires the application
itself to inform, not to direct others to find out for
themselves.
In re Gardner et al., 57 CCPA 1207, 427 F.2d 786, 166 USPQ 138
(1970)”).
II.
As to the deposit requirement set forth by the examiner,
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