Appeal No. 1996-1002
Application 07/988,945
specification demonstrates that all of the antibodies of the pending claims have binding
properties and therefore can be used in assays as diagnostic tools. The examiner does
not explicitly address these arguments. (Answer, page 15). Thus, on this record, we
have no indication whether the examiner would regard the specification, as filed, to
adequately support the use of the claimed compositions as diagnostic tools as alleged
by appellants. We are cognizant of the lack of any specific written description in the
specification of such a use. However, a patent application need not teach, and
preferably omits, what is well known in the art. In re Buchner, 929 F.2d 660, 661, 18
USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert. denied , 480 U.S. 947
(1987); and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730
F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984). Compare In re Malachowski,
530 F.2d 1402, 1405, 189 USPQ 432, 435 (CCPA 1976) ("Having found that the
claimed composition has utility as contemplated in the specification, §101 is satisfied
and it becomes unnecessary to decide whether it is in fact useful for the other purposes
indicated in the specification as possibilities."), citing In re Gottlieb, 328 F.2d 1016,
1019, 140 USPQ 665, 668 (CCPA 1964). We leave to the examiner, in the first
instance, to evaluate the present disclosure to determine whether it is sufficient to
enable those skilled in this art to practice the use of the claimed composition as a
diagnostic tool without undue experimentation. On the record before us, neither the
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007