Interference No. 103,586
deemed abandoned. Photis, 225 USPQ at 950.
Brown’s initial argument that the Barbacid specification is defective because it
failed to disclose any test substance used in the assay is tantamount to arguing that
Barbacid disclosed no mode at all. However, failure to set forth any mode is an
enablement issue, i.e. how to use an invention. U.S. Department of Energy v. Daugherty,
215 USPQ 4, 11 (CCPA 1982). Enablement and best mode are separate requirements.
Engel Industries, Inc. v. The Lockformer Co., 946 F.2d 1528, 1533, 20 USPQ2d 1300,
1304 (Fed. Cir. 1991). We decline to entertain Brown’s attack of no disclosure as a best
mode violation when in fact, no mode is an enablement issue, not previously raised by
Brown.
Brown’s argument that it is necessary that Barbacid disclose in their specification
the test substance found by Barbacid to have the best measurable activity is without merit.
The Barbacid claims are directed to a screening assay which examines whether a test
substance has the ability to specifically inhibit the transfer of farnesyl to ras. When the
assay is performed, the test substance either reduces the level of FT activity or it does not
and those that reduce the level of FT activity are identified as inhibitors for FT activity.
Barbacid’s claims are not directed to a method of determining which inhibitor possesses
the greatest reduction in FT activity.
Brown, in their brief, now argue that the evidence taken during the testimony period
shows that Barbacid tested and found a peptide corresponding to the C-terminus of ras (a
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