(2) Neither we, nor Cabilly, are bound by an ex parte decision of the examiner of the
Glaxo applications. Glaxo Wellcome, Inc. v. Cabilly, 56 USPQ2d 1983, 1984 (BPAI (ITS)
2000). Moreover, it does not appear, based on the evidence pointed out to us, that the issue of
whether the ‘611 claims interfere-in-fact with the Glaxo claims was before the examiner.
(3) and (4) Glaxo has not shown that the ‘611 application lacks the required written
descriptive support. See pages 31 to 45 of this opinion.
Glaxo preliminary motion 11 is DENIED. Since Glaxo did not set forth a prima facie
showing, we need not and have not considered Cabilly opposition 11.
Glaxo preliminary motion 10
In its preliminary motion 10, Glaxo moves for judgment that the ‘611 involved claims are
unpatentable under 35 USC § 112, ¶ 1, as lacking an enabling disclosure. In particular Glaxo
states that (Paper 56 at 1):
This Motion is based on the allegation that the claims are not enabled as of the
“effective filing date” of the Cabilly application, which according to the USPTO
is April 8, 1983.
"Enablement, or utility, is determined as of the application filing date." In re Brana, 51
F.3d 1560, 1567 n.19, 34 USPQ2d 1436, 1441 n.19 (Fed. Cir. 1995), Cf. Reiffen v. Microsoft
Corp., 214 F.3d 1342, 1345, 54 USPQ2d 1915, 1917 (Fed. Cir. 2000) (written description is
determined as of the application filing date and not the filing date of parent applications). The
problem with Glaxo preliminary motion 10 is that it does not address the proper inquiry, i.e.,
were the claims of the ‘611 application enabled as of the filing date of the ‘611 application (i.e.,
12 August 1997)? Instead, Glaxo preliminary motion 10 focuses on the state of the art as of the
filing date of the ‘457 application, a grandparent application of the ‘611 application. For
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