Appeal No. 2005-1918 Παγε 3
Application No. 09/946,396
10-50% anhydrogalactose residues [galactose residues],” and a “protein content [ ]
disclosed as being as low as 0.00%” (Answer, page 3, first and second sets of brackets
in the original).
According to appellants, “the Gebert reference does not support a prima facie
case of anticipation” (Brief, page 5) because it is not enabling for a galactomannan
composition containing less than 0.1% protein by weight, despite “the protein content
values [of 0.06% and 0.00%] reflected in the Gebert reference at column 15, Table 4”
(id.). Appellants argue that Gebert’s most restrictive claim (claim 2) is limited to “purified
galactomannans ‘with less than 0.5% by weight’ of protein” (Brief, pages 7-8), thus, the
“extremely low protein contents mentioned in Table 4 of Gebert, are not material to [the]
patentability [of Gebert’s claims] and [ ] should not be given the same deference and
presumption of validity extended to more significant portions of the disclosure.” Id.,
page 8.
Nevertheless, “[i]n patent prosecution, the examiner is entitled to reject
applications as anticipated by a prior art patent without conducting an inquiry into
whether or not that patent is enabled or whether or not it is the claimed material (as
opposed to the unclaimed disclosures) in that patent that are at issue.” Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355, 65 USPQ2d 1385, 1416 (Fed. Cir.
2003) (footnote and citation omitted). Thus, “a presumption arises that both the claimed
and unclaimed disclosures in a prior art patent are enabled” (id.), which appellants “can
then overcome [ ] by proving that the relevant disclosures of the prior art patent are not
enabled” (id.).
Appellants argue that “the methods disclosed in Gebert cannot produce a purified
galactomannan composition with a protein content lower than 0.40%” (Brief, page 5),
and that any reported values of less than 0.40% “are likely[ ] due to measuring errors
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