Appeal No. 2006-3253 Page 9
Application No. 10/276,547
(footnote 5). Appellant cites In re Langer, 503 F.2d 1380, 1391, 183 USPQ 288, 297
(CCPA 1974), and In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 370 n.4 (CCPA
1971), as supporting the use of post-filing evidence to “show that the specification’s
assertion of utility – a fact – is credible.” Id.
It is true that post-filing evidence can be relied on for certain purposes. See
Gould v. Quigg, 822 F.2d 1074, 1078, 3 USPQ2d 1302, 1305 (Fed. Cir. 1987):
[A] later dated publication cannot supplement an insufficient disclosure in
a prior dated application to render it enabling. . . . [However, a later
publication can be used] as evidence of the level of ordinary skill in the art
at the time of the application and as evidence that the disclosed device
would have been operative. Compare In re Hogan, 559 F.2d 595, 605,
194 USPQ 527, 537 (CCPA 1977) (‘This court has approved use of later
publications as evidence of the state of the art existing on the filing date of
an application.’ (footnotes omitted) (emphasis in original)) with In re Glass,
492 F.2d 1228, 1232, 181 USPQ 31, 34 (CCPA 1974) (later publications
which add to the knowledge of the art cannot be used to supplement an
insufficient disclosure).
As the Glass court put it: “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.” Glass, 492 F.2d at 1232, 181 USPQ at
34. The Glass court addressed the enablement requirement of § 112, but the same rule
applies to the utility requirement of § 101. Brana, 51 F.3d at 1567 n.19, 34 USPQ2d at
1441 n.19 (both enablement and utility determined as of application’s filing date).
It is true that the present specification states that “[d]iabetes also can be
potentially treated by regulating the activity of human DA-like GPCR.” Page 51,
lines 28-29. However, those skilled in the art would not have found the asserted utility
to be credible based on the evidence of record at the time of filing. The specification
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