Appeal No. 2005-0731 Page 11
Application No. 09/974,712
Brenner, 383 U.S. at 534-35, 148 USPQ at 695. This standard has been found to be
met by pharmaceutical compositions shown to be useful in mouse models and in
humans for treating acute myeloblastic leukemia (Jolles, 628 F.2d at 1327-28, 206
USPQ at 891); by evidence showing successful in vitro testing supplemented by similar
in vitro and in vivo activities of structurally similar compounds (Cross, 753 F.2d at 1051,
224 USPQ at 748); and by evidence showing in vivo antitumor activity in mice,
combined with a disclosure that the claimed compounds had higher antitumor activity
than a related compound known to have antitumor activity (Brana, 51 F.3d at 1567, 34
USPQ2d at 1442).
By contrast, Brenner’s standard has been interpreted to mean that “vague,
general disclosures or arguments of ‘useful in research’ or ‘useful as building blocks of
value to the researcher’” would not satisfy § 101. See Kirk, 376 F.2d at 945, 153 USPQ
at 55 (interpreting Brenner). Likewise, a disclosure of a “plastic-like” polypropylene
capable of being pressed into a flexible film was held to show that the applicant was “at
best . . . on the way to discovering a practical utility for polypropylene at the time of the
filing,” but not yet there. Ziegler, 992 F.2d at 1203, 26 USPQ2d at 1605.
In this case, the examiner found the specification’s disclosure to be inadequate,
in part because “[n]o comparisons between the sequence of the protein of the present
invention and any voltage-gated potassium channel protein have been disclosed in the
specification, nor does the specification disclose that the protein encoded for by the
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