Appeal No. 1999-2330
Application No. 08/219,200
Finally, the examiner finds that Yi-qun indicates that ?it is clear that inhibition of T
cell response to soluble antigens will require the blocking of both B7-2 and B7-1 to be
effective. More important it is unlikely that ongoing T cell response will be susceptible
to inhibition by anti-B7 reagents, for example in autoimmune disease.” Id.
For their part, appellants first argue that, ?one is not required to enable any more
than what is claimed.” Brief, page 7.1 Appellants further argue that Lenschow, of
record, provides ?in vivo data which show that blocking the CD28 receptor from binding
the B7 antigen using only CD28 results in manipulation of the immune system.
Lenschow conclude that blocking the interaction of co-stimulatory molecules such as
CD28-B7 may provide a new approach to immunosuppression.” Brief, page 9.
Appellants argue that, on the basis of this publication, a 35 U.S.C. § 101 rejection was
withdrawn by the examiner, however, the lack of enablement rejection was improperly
maintained in view of Lenschow. Brief, pages 11-12.
1 We note, the "invention" referred to in the enablement requirement of section
112 is the claimed invention. Lindemann Maschinenfabrik GMBH v. American Hoist
and Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984) (the
"question is whether the disclosure is sufficient to enable those skilled in the art to
practice the claimed invention"); Raytheon Co. v. Roper Corp. , 724 F.2d 951, 956, 220
USPQ 592, 596 (Fed. Cir. 1983). That claims are interpreted in light of the specification
does not mean that everything expressed in the specification must be read into all the
claims. On the contrary, as was said in Environmental Designs, Ltd. v. Union Oil Co. of
California, 713 F.2d 693, 699, 218 USPQ 865, 870-71 (Fed. Cir. 1983): The
specification must be sufficiently explicit and complete to enable one skilled in the art to
practice the invention, while a claim defines only that which the patentee regards as his
invention. 35 U.S.C. §112. The claim, not the specification, measures the invention.
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