Appeal No. 2002-2030 Page 11
Application No. 09/294,663
disclosure does little to reduce the experimentation needed to practice the
claimed invention. At best, it identifies several insect species that might contain
IIM-encoding genes similar in sequence to those of T. ni; the IIM-encoding genes
from these species, therefore, might reasonably be expected to hybridize to a
probe corresponding to part of the T. ni IIM cDNA.
However, even if the evidence showed that IIM-encoding genes could be
isolated from the eight other insect species shown to express 400 kD proteins
that cross-react with antibody to T. ni IIM, without undue experimentation, such
evidence would not show enablement of the full scope of claim 1. Claim 1 is
extremely broad; as the examiner pointed out, the category of invertebrates are
not limited to insects, it also encompasses worms, mollusks such as snails and
clams, and crustaceans such as lobsters. Appellants have provided no evidence
with respect to non-insect invertebrates. Thus, the specification might, at best,
provide a starting point for further research, but it does not provide a disclosure
that enables practice of the full scope of claim 1 without undue experimentation.
Essentially, Appellants’ position is that, even though the specification
provides no guidance regarding IIM-encoding genes in species other than T. ni,
the claims are enabled because everything needed to practice the full scope of
the claims was known in the art. The Federal Circuit has cautioned against over-
reliance on the rule, cited by Appellants here, that a patent need not teach, and
preferably omits, what is well known in the art. See Genentech Inc. v. Novo
Nordisk A/S, 108 F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997):
“[T]hat general, oft-repeated statement is merely a rule of supplementation, not a
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007