Appeal No. 2004-1259
Application No. 09/832,355
According to the examiner, claims 1 and 43, for example recite that the VEGF
portion may have bone growth promoting activity, such is not an art recognized property
of VEGF, and is neither described or enabled by the specification as originally filed.
Answer, page 8.
We agree with appellants that the examiner has failed to provide sufficient
evidence to establish a prima facie case of lack of enablement. We begin with claim
interpretation. As set forth in In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998), “[t]he name of the game is the claim.” Since claim interpretation
will normally control the remainder of the decisional process, in considering the issue of
patentability “analysis begins with a key legal question – what is the invention claimed?”
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-1568, 1 USPQ2d 1593, 1597
(Fed. Cir. 1987). An analysis of whether the claims under appeal are supported by an
enabling disclosure requires a determination of whether that disclosure contains
sufficient information regarding the subject matter of the appealed claims as to enable
one skilled in the pertinent art to make and use the claimed invention.
In the present case, claim 1 requires that the first and second peptide portions
either separately promote angiogenesis or bone growth. A patent need not teach and
preferably omits, what is well known in the art. Although not explicitly stated in section
112, to be enabling, the specification of a patent must teach those skilled in the art how
to make and use the full scope of the claimed invention without "undue experimen-
tation." In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991); In
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