Appeal 2007-0852
Application 09/919,195
as the Examiner has pointed out, the Specification does not provide guidance
regarding what chemical compounds are responsible for RARβ antagonist activity,
such that a person skilled in the art can “visualize or recognize the identity of the
members of the genus.
Thus, the Specification does not describe the recited genera of RARβ
antagonist compounds sufficiently to allow a person skilled in the art to
determine which compounds possess the required antagonist activity.
The court confronted similar facts in University of Rochester v. G.D. Searle
& Co., 358 F.3d 916, 69 USPQ2d 1886 (Fed. Cir. 2004). In that case, the patent
claimed a method of selectively inhibiting the enzyme PGHS-2 (also known as
COX-2) by “administering a non-steroidal compound that selectively inhibits
activity of the PGHS-2 gene product to a human.” Id. at 918, 69 USPQ2d at 1888.
The patent “describe[d] in detail how to make cells that express either COX-1 or
COX-2, but not both . . . , as well as ‘assays for screening compounds, including
peptides, polynucleotides, and small organic molecules to identify those that
inhibit the expression or activity of the PGHS-2 gene product.[’]” Id. at 927, 69
USPQ2d at 1895.
The court held that the disclosure of screening assays and general classes of
compounds was not adequate to describe compounds having the desired activity:
Without disclosure of which peptides, polynucleotides, or small organic molecules
have the desired characteristic, the claims were not adequately described. See id.
(“As pointed out by the district court, . . . the ‘850 patent does not disclose just
‘which “peptides, polynucleotides, and small organic molecules” have the desired
characteristic of selectively inhibiting PGHS-2.’ . . . Without such disclosure, the
claimed methods cannot be said to have been described.”).
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