Appeal No. 2006-3253 Page 14
Application No. 10/276,547
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. An “enabling disclosure” must include a
utility that satisfies § 101. See In re Fisher, 421 F.3d 1365, 1378, 76 USPQ2d 1225,
1235 (Fed. Cir. 2005) (“It is well established that the enablement requirement of § 112
incorporates the utility requirement of § 101.”); In re Kirk, 376 F.2d 936, 942, 153 USPQ
48, 53 (CCPA 1967) (“[S]urely Congress intended § 112 to pre-suppose full satisfaction
of the requirements of § 101. Necessarily, compliance with § 112 requires a description
of how to use presently useful inventions, otherwise an applicant would anomalously be
required to teach how to use a useless invention.”).
Appellant has argued that Langer applies because the specification’s assertion of
utility is an issue of fact. Appeal Brief, page 7, n.5. Whether a claimed invention is
supported by a patentable utility is indeed a question of fact, not law. Newman v.
Quigg, 877 F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989) (“Utility under 35
U.S.C. § 101 is a question of fact.”). No case that we are aware of, however, has held
that post-filing evidence can be relied on with respect to any issue that is considered a
question of fact rather than one of law. Such a rule would do nothing to encourage the
full, enabling disclosure that is “[t]he sine qua non of a valid patent.” White
Consolidated Inds., Inc. v. Vega Servo-Control, Inc., 713 F.2d 788, 791, 218 USPQ 961,
963 (Fed. Cir. 1983).
Rather, it would encourage applications based on speculation. In the biotech
context, inventors would be rewarded for filing applications that disclose a protein and
assert that it is useful for treating diseases, and listing every disease the inventor can
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