Appeal No. 2000-1929
Application No. 08/019,297
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.”). “[T]he law requires that the disclosure in the
application shall inform them how to use, not how to find out how to use for
themselves.” In re Gardner, 427 F.2d 786, 789, 166 USPQ 138, 141 (CCPA
1970).
Appellants argue that
Following the teachings of the specification, the skilled artisan could
also use these antibodies to bind a labeled secondary antibody. . . .
Consequently, the skilled artisan needs no undue experimentation
to make and use the antibodies.
Appeal Brief, page 21.
This argument is not persuasive. The claimed antibodies are
“directed against an antigen . . .selected from p25, p15, p36, p42, and
p80.” See claim 45. Thus, the claimed antibodies do not “bind a labeled
secondary antibody,” as Appellants assert; rather, they bind one of the
specified HIV proteins.3 The specification discloses no method for using
the instantly claimed antibodies, directed against p15, p36, p42, or p80,
and therefore fails to teach those skilled in the art how to use the claimed
invention.
3 The claimed antibodies might be bound by a labeled secondary antibody, but at best that would
be relevant to teaching how to use the labeled secondary antibody. In any case, since the
specification teaches that the HIV envelope proteins are not useful diagnostically (page 9, lines
11-13), the specification provides no context in which a skilled artisan would use an
immunoassay for detecting the instantly claimed antibodies.
14
Page: Previous 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 Next
Last modified: November 3, 2007