Appeal No. 95-4692
Application 08/141,316
cation, or knowledge generally available in the art? Would
the isolation of an enzyme having the claimed properties
require extensive or routine experimentation? Etc.
In making his evaluation, the examiner should also
consider the guidance recently provided by our appellate
reviewing court 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, 86 S. Ct. 1033, 1042-43, 16
L.Ed.2d 69, 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.
In reconsidering the issue of enablement, the examiner is
urged to take all of the foregoing into account. If the
examiner determines that the claims on appeal would not have
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