Appeal No. 2003-2146 Page 8
Application No. 09/546,143
First, the examiner’s assertion that Genentech stands for the proposition
that “relying on the knowledge of one skilled in the art cannot cure the deficiency
in enablement” is, on this record, erroneous. To the extent that the examiner is
overly concerned about the publication date of case law, we note that on March
30, 2004 our appellant reviewing court rendered a decision in Chiron Corp. v.
Genentech Inc., 363 F.3d 1247, 70 USPQ2d 1321 (Fed. Cir. 2004). According to
our appellate reviewing court (id. at 1254, 70 USPQ2d at 1325-26, alteration
original),
a patent disclosure need not enable information within the
knowledge of an ordinarily skilled artisan. Thus, a patentee
preferably omits from the disclosure any routine technology that is
well known at the time of application. See Hybritech, 802 F.2d at
1384. At the other end of the knowledge continuum, a patent
document cannot enable technology that arises after the date of
application. The law does not expect an applicant to disclose
knowledge invented or developed after the filing date. Such
disclosure would be impossible. See In re Hogan, 559 F.2d 595,
605-06 [194 USPQ 527] (CCPA 1977). Nascent technology,
however, must be enabled with a “specific and useful teaching.”
Genentech, Inc. v. Novo Nordisk, A/S, 108 F.3d 1361, 1368 [42
USPQ2d 1001] (Fed. Cir. 1997). The law requires an enabling
disclosure for nascent technology because a person of ordinary
skill in the art has little or no knowledge independent from the
patentee’s instruction. Thus, the public’s end of the bargain struck
by the patent system is a full enabling disclosure of the claimed
technology. See, e.g., J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred
Int’l, Inc., 534 U.S. 124, 142 [60 USPQ2d 1865] (2001).
On this record, the examiner failed to provide any evidence that the
claimed invention is directed to a nascent technology. To the contrary, the
examiner did not dispute appellants’ assertion (Brief, page 4) that “‘amino
protecting groups’ are well-known and exemplified by many members, all of
which are within the skill of the art of organic synthesis.” Accordingly, contrary to
the examiner’s assertion Chiron reaffirms the well-established concept that “a
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