Appeal No. 2004-1930 Page 5
Application No. 08/940,544
within the scope of the present invention, without inference or guesswork.” Id. at
5.
Again, we do not agree with appellants’ reasoning. A patent disclosure
need not set forth a compound with such specificity such that the compound
could be claimed in order to serve as an anticipatory reference under 35 U.S.C. §
102(b). See In re Schaumann, 572 F.2d 312, 317, 197 USPQ 5, 10 (CCPA
1978). We thus find that one skilled in the art, upon reading the Eshhar
disclosure, would envisage the fusion protein encoded by the polynucleotide of
claim 1, and “it is of no moment that each compound is not specifically named or
shown by structural formula in that publication.” In re Petering, 301 F.2d 676,
681-82, 133 USPQ 275, 280 (CCPA 1962); see also In re Schaumann, 572 F.2d
at 317, 197 USPQ at 10 (noting that In re Arkley “should not be interpreted as
establishing a new test for determining whether an invention has been described
in a reference within the meaning of 35 U.S.C. § 102. . . . It was not this court’s
intention in Arkley to effect a change in the accepted definition of ‘anticipation,’ a
term of art meaning ‘the disclosure in the prior art of a thing substantially identical
with the claimed invention.’”).
Appellants argue further that Eshhar does not provide an enabling
disclosure. See Appeal Brief, page 5. According to appellants, Eshhar does not
provide any examples that relate to CD28 containing fusion proteins. In addition,
appellants contend that the disclosure of a scFV-CD16α fusion, along with the
“mere mention of CD28” is insufficient to provide an enabling disclosure, as the
examiner has provided “[n]o indication of similarities between CD28 and CD16.”
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