Appeal No. 2005-0838
Application No. 10/174,414
discussed above, we find that the teachings of the specification would not have enabled
such persons to make and use the claimed method of prophylaxis. Moreover, contrary
to the appellants’ argument, we point out that “[p]atent protection is granted only in
return for an enabling disclosure of an invention, not for vague intimations of general
ideas that may or may not be workable.” Genentech Inc. v. Novo Nordisk A/S, 108 F.3d
at 1366, 42 USPQ2d at 1005 (Fed. Cir.), cert. denied, 118 S. Ct. 397 (1997), (“Tossing
out the mere germ of an idea does not constitute an enabling disclosure”).
We find the appellants’ arguments that U.S. Patent Nos. 6,610,745; 6,610,716;
and 6,608,060 describe methods of preventing several of the claimed diseases (Brief, p.
7), to be unpersuasive. We have reviewed the claims in the referenced patents and find
none which are directed to methods of prevention.
We find the appellants’ arguments with respect to Burroughs Wellcome Co. v.
Barr Laboratories Inc., 40 F.3d 1223, 32 USPQ2d 1915 (Fed. Cir. 1994), cert. denied,
515 U.S. 1130 (1995), to be misdirected. As acknowledged by the appellants, the issue
in Burroughs was when did the inventors conceive of the invention. Conception is “‘the
formation in the mind of the inventor, of a definite and permanent idea of the complete
and operative invention, as it is thereafter to be applied in practice.’” Burroughs
Wellcome Co. v. Barr Laboratories Inc., 40 F.3d at 1223, 32 USPQ2d at 1915 (Fed. Cir
1994) cert. denied, 515 U.S. 1130 (1995), quoting Hybritech Inc. v. Monoclonal
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