Interference 102,728
would have enabled one skilled in the art “to make and use” said construct at the time
the application was filed. Scripps Clinic v. Genentech Inc., 927 F.2d 1565, 1571, 18
USPQ2d 1001, 1006 (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).
Brake acknowledges that the ‘325 Application does not explicitly disclose how “to
make” an “n=0” DNA construct. Paper No. 15, p. 11. However, it points out that “the
reagents and techniques needed to make such a DNA molecule were routine [in the art]
by January 1983.” Id. Brake argues, and provides the declaration of Dr. Tekamp-
Olson16 to support its position, that site-directed mutagenesis (a.k.a. in vitro and
oligonucleotide mutagenesis) and other DNA-modifying techniques were known in the
art by January, 1983. Id., pp. 11-12. Thus, Brake contends that the disclosure of the
“n=0” DNA construct in the ‘325 Application, in combination with knowledge generally
available in the art, would have enabled one skilled in the art “to make” an invention
within the scope of Count 1, without undue experimentation, at the time the application
was filed. Id. We agree.
Enablement does not require that the specification disclose that which is well
known in the art. Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d at 1384, 231
USPQ at 94. Brake’s witness, Dr. Tekamp-Olson, testified that in vitro mutagenesis
was known and used extensively to modify DNA by those skilled in the art in January,
16 As noted in footnote 15, supra, we have not considered Dr. Brake’s
declaration.
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