Appeal No. 2005-0102 Page 12
Application No. 09/840,787
We conclude that the specification does not provide blaze marks that would lead a
person of skill in the art to the specific combination of HRM-19 and diagnosis of lung
cancer. The specification provides only a single list of sixty-seven diseases, which are
said to be applicable to all of the forty-nine disclosed HRMs. The specification provides
no further details on which HRMs are expected to be associated with which diseases.
Thus, the specification provides none of the blaze marks that the Ruschig court held to be
necessary to specifically describe a species encompassed by a disclosed genus.
Therefore, Appellants’ generic disclosure lacks the specificity necessary to
consider it to describe using HRM-19 to diagnose lung cancer. Rather, that disclosure is
made for the first time in the Lal declaration. Because the specification does not
adequately disclose that HRM-19 is useful for diagnosing lung cancer, the post-filing
evidence presented in the Lal declaration does not support a disclosed utility and cannot
be relied upon to establish that HRM-19 has patentable utility. See In re Brana, 51 F.3d
1560, 1567 n.19, 34 USPQ2d 1436, 1441 n.19 (Fed. Cir. 1995) (A post-filing declaration
cannot be used to “render an insufficient disclosure enabling,” but only “to prove that the
disclosure was in fact enabling when filed (i.e., demonstrat[ing] utility).”).
amended, are adequately described by the originally filed specification, under the test set out in In re
Ruschig.
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