Appeal No. 2001-0918 Page 3
Application No. 08/758,106
than prior decisions in and of themselves, which must support the legal
conclusion of whether the specification provides an enabling disclosure of the
claimed invention. Cf. In re Cofer, 354 F.2d 664,667, 148 USPQ 268, 271
(CCPA 1966) (while the court in Coffer make this observation with regard to the
question of obviousness under 35 U.S.C. § 103, in our opinion this principle is
equally applicable to the question of enablement.).
As set forth In re Glass, 492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA
1974), the sufficiency of appellants’ disclosure under 35 U.S.C. § 112, first
paragraph is judged as of its filing date. In this regard, our appellate reviewing
court recognized that “[i]n view of the rapid advances in science, … that what
may be unpredictable at one point in time may become predictable at a
later time.” See Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1375, fn.
10, 52 USPQ2d 1129, 1138, fn. 10 (Fed. Cir. 1999). On this record, appellants
appear to highlight this point, when they “asked the Examiner to take Official
Notice that the product Rogaine was approved for the treatment of male pattern
baldness by the Food and Drug Administration….” Brief, page 3. The examiner
does not dispute, “minoxidil is accepted in the art as an effective treatment for
baldness.” Answer, page 8. Thus, this record has factually established that in
the time period since the Ferens decision there is an effective treatment for
baldness, minoxidil.
What has not been factually established on this record is why one of
ordinary skill in the art would question appellants’ presumptively accurate
disclosure. To satisfy the enablement requirement of 35 U.S.C. § 112, first
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