Appeal No. 2000-1929
Application No. 08/019,297
The specification also states that the invention “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. These antibodies are liable
of forming useful tools in the further study of antigenic determinants of LAV
viruses or LAV-related viruses.” Page 21, lines 32-39. No similar disclosure is
made with respect to other HIV proteins such as p15, p36, p42, or p80. Nor does
the specification disclose how to use HIV proteins in methods other than in
diagnosis of AIDS or how to use HIV-specific antibodies in methods other than
the “study of antigenic determinants of LAV viruses.”
The closest the specification comes to disclosing a method of using p15,
p36, p42, and p80, or antibodies thereto, is in its references to viral extracts.
See, e.g., page 9, lines 15-19 (“[T]he invention concerns all extracts of the virus,
whether it be the crudest ones – particularly mere virus lyzates [sic] – or the more
purified ones, particularly extracts enriched in the p25 protein or even the purified
p25 protein.”). When these references to viral extracts are read in the context of
the specification as a whole, however, it is clear that the critical component in the
extracts is p25. In any event, the specification’s vague references to crude viral
extracts is not the “full, clear, concise, and exact” disclosure that is required by
the statute. See Genentech v. Novo Nordisk, 108 F.3d at 1366, 42 USPQ2d at
1005 (“Tossing out the mere germ of an idea does not constitute enabling
disclosure. While every aspect of a generic claim certainly need not have been
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