Appeal No. 2006-0299 Page 9
Application No. 09/964,412
those of skill in the art would not have considered the problems cited by the
examiner to be a source of undue experimentation in this particular field.
Moreover, it is well settled that a therapeutic method need not be ready for broad
clinical application in order to be enabled. See In re Brana, 51 F.3d 1560, 1567,
34 USPQ2d 1436, 1442 (Fed. Cir. 1995): “Usefulness in patent law, and in
particular in the context of pharmaceutical inventions, necessarily includes the
expectation of further research and development. The stage at which an
invention in this field becomes useful is well before it is ready to be administered
to humans.”5
5 The Brana court wrote in terms of of “usefulness,” but the rejection on appeal was based on 35
U.S.C. § 112, first paragraph. See 51 F.3d at 1564, 34 USPQ2d at 1439.
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