Appeal No. 2005-0731 Page 13
Application No. 09/974,712
earliest date shown on the GenBank entry cited by Appellants, however, is October 23,
2000. (The GenBank entry also shows that it was printed out on October 16, 2003, and
bears a notation “PRI 19-JUN-2001”, whatever that means.)
Appellants also rely on two scientific papers to support their assertion that
“human ion channel proteins are well known to those of skill in the art, this is particularly
true for voltage-gated potassium channels and the sequences of the present invention
encode a voltage-gated potassium channel, KCNA7.” Appeal Brief, page 7. The
papers, however, were published in 2001 and 2002, respectively. Appellants have
presented no evidence to show that either papers or the GenBank entry were available
to those skilled in the art as of October 11, 2000.
Appellants have also presented no evidence that the later-published papers
show the state of the art as of the application’s effective filing date. See In re Hogan,
559 F.2d 595, 605, 194 USPQ 527, 537 (CCPA 1977) (“[U]se of later publications as
evidence of the state of art existing on the filing date of an application” is acceptable.).
See also 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.
Hogan and Glass concerned enablement, but the same standard applies to utility under
§ 101. See Brana, 51 F.3d at 1567 n.19, 34 USPQ2d at 1441 n.19 (“Enablement, or
utility, is determined as of the application filing date.”).
the issue because, even assuming Appellants are correct, the specification does not adequately disclose
the utility of the claimed nucleic acids.
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: November 3, 2007