Appeal No. 2000-1929
Application No. 08/019,297
filed March 9, 1999 (Paper No. 40), which show that “the claimed antibodies
could be purified following the teachings of the specification and conventional
techniques without undue experimentation.” Appeal Brief, page 22.
These arguments are not persuasive. The specification’s only mention of
HIV proteins other than p25 is found on pages 8-9. The relevant passages
disclose the proteins p15, p36, p42, and p80 as being putative viral proteins
detectable by denaturing gel electrophoresis (page 8, lines 21-31) and also
disclose that the putative envelope proteins (p36, p42, and p80) are “not
detectable immunologically by the patients’ sera” (page 9, lines 11-13).
Where, as here, a specification provides only what amounts to a passing
reference to a later-claimed invention, the specification’s deficiencies cannot be
rectified by asserting that all the disclosure required to enable the invention is
within the skill of the art. “[A] specification need not disclose what is well known
in the art. However, that general, oft-repeated statement is merely a rule of
supplementation, not a substitute for a basic enabling disclosure. It means that
the omission of minor details does not cause a specification to fail to meet the
enablement requirement. . . . It is the specification, not the knowledge of one
skilled in the art, that must supply the novel aspects of an invention in order to
constitute adequate enablement.” Genentech v. Novo Nordisk, 108 F.3d at
1366, 42 USPQ2d at 1005 (citation omitted).
Even assuming, for the sake of argument, that those of skill in the art
would have been able to make the claimed antibodies without undue
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