Appeal No. 2001-2500
Application No. 08/590,729
a publication shall have actually been made in order to satisfy the enablement
requirement.”).
Of course, to anticipate or render obvious a later-claimed invention, the
prior art must provide an enabling disclosure. See In re Hoeksema, 399 F.2d
269, 274, 158 USPQ 596, 601 (CCPA 1968) (“[I]f the prior art of record fails to
disclose or render obvious a method for making a claimed compound, at the time
the invention was made, it may not be legally concluded that the compound itself
is in the possession of the public.”). To the extent that it could be argued that
Kudlicki does not provide an enabling disclosure of the instantly claimed method,
we find that Picking provides whatever guidance might be missing from Kudlicki.
Picking discloses production of alanyl-tRNA and lysyl-tRNA labeled with the
fluorescent label CPM (3-(4-maleimidophenyl)-7-diethylamino-4-
methylcoumarin). See page 2369, the paragraph bridging the columns and first
paragraph, right-hand column.
Thus, it would have been obvious to a person of ordinary skill in the art to
combine the CPM-labeled alanyl-tRNA or CPM-labeled lysyl-tRNA taught by
Picking with the cell-free protein synthesis system taught by Kudlicki. The
necessary suggestion to so modify K udlicki’s system is provided by Kudlicki, who
expressly suggests using fluorescently labeled aminoacyl tRNAs in the disclosed
system. Kudlicki and Picking therefore render claim 1 prima facie obvious.1
1 Since Kudlicki and Picking are sufficient to establish prima facie obviousness, we see no need
to discuss the teachings of Hildenbrand with respect to claim 1.
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