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Answer, page 4). However, “a patent need not teach, and
preferably omits, what is well known in the art.” 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). In our view, the flaw in the examiner’s
reasoning is the failure to acknowledge the level of skill in
the art at the time of appellants’ invention.
The record establishes that “the amino acid and/or DNA
sequences of [the] TSH $-subunit were well known to those of
ordinary skill in the art” at the time of the invention (main
Brief, page 28). In particular, the sequence of cDNA encoding
the $-subunit of murine TSH was known, as were the amino acid
sequences of the $-subunits of human, bovine, porcine and
murine TSH. See Shome, Maghuin-Rogister, Gurr, Vamvakopoulos,
Pierce (1981) and Sairam. The examiner has not explained why
appellants’ disclosure, together with what was known in the
art at the time of the invention, does not satisfy the
enablement requirement.
In addition, we note the examiner’s concern that “an
undue amount of experimentation” would be required to practice
the claimed invention because ”[t]he specification has not
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