Appeal No. 1999-1245
Application No. 08/245,282
wortmannin can inhibit PI3K in vivo. Brief, pages 9-10. However, patents are written
to enable those skilled in the art to practice the invention, and Section 112 speaks as of
the application filing date. W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1558,
220 USPQ 303, 316 (Fed. Cir. 1983). Moreover, the Court stated in In re Glass1,
If a disclosure is insufficient as of the time it is filed, can it be made
sufficient, while the application is still pending, by later publications which
add to the knowledge of the art so that the disclosure, supplemented by
such publications, would suffice to enable the practice of the invention?
We think it cannot....that application sufficiency under § 112, first
paragraph, must be judged as of its filing date. It is an applicant's
obligation to supply enabling disclosure without reliance on what others
may publish after he has filed an application on what is supposed to be a
completed invention.
In addition in Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1376, 52 USPQ2d
1129, 1139 (Fed. Cir. 1999), the Court held that the fact that persons skilled in the art
are able to practice the invention by the exercise of substantial experimentation well
beyond the broad concepts that appear in the specifications is not probative of
enablement. In the present case, appellant has failed to show that the alleged
post-filing success of Sato were accomplished by following the teachings of the
specification. Accordingly, in light of Glass and Enzo, we believe that appellant’s
reliance on the Sato publication is misplaced.
In spite of the appellant’s misplaced reliance on the evidentiary value on Sato, we
are mindful that in vitro results with respect to the particular pharmacological activity
1 In re Glass, 492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA 1974).
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