Appeal No. 2002-2030 Page 12
Application No. 09/294,663
substitute for a basic enabling disclosure. It means that the omission of minor
details does not cause a specification to fail to meet the enablement requirement.
. . . It is the specification, not the knowledge of one skilled in the art, that must
supply the novel aspects of an invention in order to constitute adequate
enablement.”
The Genentech court also held that, “[w]hile every aspect of a generic
claim certainly need not have been carried out by an inventor, or exemplified in
the specification, reasonable detail must be provided in order to enable members
of the public to understand and carry out the invention.” Id. In this case, as in
Genentech, the specification does not provide the “reasonable detail . . . to
enable members of the public to understand and carry out the invention.” It
therefore does not satisfy the enablement requirement of 35 U.S.C. § 112, first
paragraph, and we affirm the examiner’s rejection of claims 1, 6, and 9.
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new
ground of rejection: Claims 3, 5-7, 9, 10, 21, and 22 are rejected under the
judicially created doctrine of obviousness-type double patenting, as being
directed to an invention that is not patentably distinct from that of claims 1-3 and
6-8 of Appellants’ patent 6,187,558.
“Obviousness-type double patenting is a judge-made doctrine that
prevents an extension of the patent right beyond the statutory time limit. It
requires rejection of an application claim when the claimed subject matter is not
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