Appeal No. 2000-1929
Application No. 08/019,297
have been carried out by an inventor, or exemplified in the specification,
reasonable detail must be provided in order to enable members of the public to
understand and carry out the invention.” Genentech Inc. v. Novo Nordisk A/S,
108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997).
Here, the specification discloses that the p15, p36, p42, and p80 viral
proteins recited in the instant claims can be purified from HIV by polyacrylamide
gel electrophoresis. See page 8, lines 21-31. The specification also indicates
that p36, p42, and p80 “may represent the major envelope proteins.” Id., lines
28-31. Finally, the specification contains the following guidance relating to anti-
p25 antibodies:
The invention finally also relates to the biological reagents that can
be formed by the LAV extracts containing the p25 protein or by the
purified p25 protein, particularly for the production of antibodies
directed against p25 in animals or of monoclonal antibodies.
Page 21, lines 32-37. However, the specification does not disclose how to make
antibodies to any of these proteins.
Appellants argue that the specification discloses how to make immune
complexes and that those of skill in the art would recognize that such immune
complexes could simply be dissociated in order to make the purified antibodies of
the instant claims. Appeal Brief, page 21. Alternatively, Appellants argue, those
of skill in the art would have known how to make the claimed antibodies from the
viral extracts or PAGE-purified proteins disclosed in the specification. Appeal
Brief, pages 22-23. Finally, Appellants argue that they have provided “objective
evidence of enablement,” in the form of six exhibits attached to the amendment
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