Appeal No. 2004-1930 Page 7
Application No. 08/940,544
provide a written description of the invention can the patent law avoid depriving
actual inventors of selected embodiments within such lists from the fruits of their
labors, and avoid providing a disincentive for research and development.” Id. at
7. The Eshhar reference, appellants contend, does not provide a written
description of CD28 as Eshhar only mentions CD28 twice, provides no examples
of fusion proteins containing CD28, does not provide a diagram of such a fusion
protein or nucleotide, and also provides no sequences of a protein or
polynucleotide that includes CD28. See id. at 8.
Section 102(b) of title 35 requires that “the invention was known or
described in a printed publication in this or a foreign country, before the invention
thereof by the applicant for patent.” In In re Hafner, 410 F.2d 1403, 161 USPQ
783 (CCPA1969), the court dealt with the question of whether “‘[w]hat constitutes
the measure of ‘the invention’ to determine whether what is claimed is a legally
recognizable invention must also constitute ‘the invention’ for determining
whether something lacks novelty under 35 U.S.C. 102(b).’” In re Schoenwald,
964 F.2d 1122, 1123, 22 USPQ2d 1671, 1673 (Fed. Cir. 1992) (emphasis in
original). The Hafner court noted that:
In essence, appellant is contending that a double standard should
not be applied in determining the adequacy of a disclosure to
anticipate under § 102, on the one hand, and to support the
patentability of a claim under § 112 on the other. He feels that a
disclosure adequate for the one purpose is necessarily adequate
for the other but, unhappily for him, this is not so. As we shall
develop, a disclosure lacking a teaching of how to use a fully
disclosed compound for a specific, substantial utility or of how to
use for such purpose a compound produced by a fully disclosed
process is, under the present state of the law, entirely adequate to
anticipate a claim to either the product or the process and, at the
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