Appeal No. 1998-2010
Application No. 08/542,861
and every possible analog of the gene (containing about 4000 nucleotides), but only
provided the details for preparing only a few EPO analogs and did not provide sufficient
disclosure to support the claims. Our appellate reviewing court found in Amgen that in
view of the structural complexity of the EPO gene, there were manifold possibilities for
changes in its structure, and there was uncertainty as to what utility would be possessed by
each of the analogs. It was determined that additional disclosure was needed to identify
various analogs within the scope of the claim, methods for making them, and structural
requirements for producing compounds with EPO-like activity.
Similarly, in the present case, we find that appellants have failed to rebut the
examiner's prima facie case of lack of enablement based on how to use the claimed
compounds with appropriate evidence as to the utility possessed by each of the various
compounds within the claim scope. “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.... Genentech, Inc. v. Novo Nordisk, 108 F.3d 1361, 1366, 42 USPQ2d 1001,
1005 (Fed. Cir. 1997). Tossing out the mere germ of an idea does not constitute enabling
disclosure. See, Brenner v. Manson, 383 U.S. 519, 536 ; 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.')''). Appellants’
disclosure appears to provide an invitation to those of skill in the art to determine how to
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