Appeal No. 2004-1369 Page 23
Application No. 08/966,233
the time of the invention would have been required to go beyond routine
experimentation.” Specifically, the examiner points out (id.), “[t]he specification
does not disclose nor contemplate knockout mouse experimental models” as
used in Rankin.
We remind appellants that the utility requirement must be met as of the
filing date of the application. See In re Brana, 51 F.3d 1560, 1567 n.19, 34
USPQ2d 1436, 1441 n.19 (Fed. Cir. 1995) (“Enablement, or utility, is determined
as of the application filing date.”). An applicant cannot rely on post-filing
advances in the art to supplement a disclosure that was inadequate at the time it
was filed. See In re Glass, 492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA
1974):
[A]pplication sufficiency under § 112, first paragraph, must be
judged as of its filing date. It is an applicant’s obligation to supply
enabling disclosure without reliance on what others may publish
after he has filed an application on what is supposed to be a
completed invention. If he cannot supply enabling information, he
is not yet in a position to file.
The Rankin reference was published a decade after the filing date of the
application, and appellants have cited no evidence to show that those skilled in
the art would have been aware of the relevant disclosures as of the application’s
filing date. Therefore, the post-filing date Rankin reference cannot be relied
upon to establish the utility of the claimed nucleic acid.
For the same reasons we are not persuaded by appellant’s assertion that
the Ebendal declaration, and the post-filing date references relied upon therein,
are sufficient “to demonstrate that the utilities predicted in the specification were
correct.” This disclosure, however, was not provided in the instant specification,
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