Appeal No. 95-2419
Application 07/850,770
Microgenysys gp160 vaccine) can be used to make vaccines with the
selectively deglycosylated envelope protein. Various modifications such as
adjuvants and other viral or toxin components known for such vaccines or
immunotherapeutics may be incorporated with the mutants.
It does not appear from this record that either appellants or the examiner have determined
whether the referenced composition “Microgenysys gp160 vaccine” has been shown to be
functional as a vaccine.
As set forth in Genentech Inc. v. Novo Nordisk A/s, 108 F.3d 1361, 1366,
42 USPQ2d 1001, 1005 (Fed. Cir. 1997):
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. See Brenner v. Manson, 383 U.S. 519, 536, 148 USPQ 689, 696
(1966)(stating, in context of the utility requirement, that “a patent is not a
hunting license. It is not a reward for the search, but compensation for its
successful conclusion.”) 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.
This application was filed on March 13, 1992. Instructive in considering the issue raised in
this appeal is the decision in In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993) (footnote omitted) where the court agreed with the PTO that a vaccine
“must by definition trigger an immunoprotective response in the host vaccinated; mere
antigenic response is not enough.” Keeping in mind that Wright was decided in 1993,
after the effective filing date of this application, the court went on to state, Wright at 1563,
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