Appeal 2007-4148
Application 09/148,012
of fertility by administration of a cholesterol lowering drug, probucal, . . .
provides further support for the claimed method.” (Br. 13.)
We do not agree that the Specification’s examples or the Miettinen
paper2 provide an enabling disclosure. The Specification’s examples show
only that an SR-BI-binding antibody can inhibit some of the activity of
SR-BI in cells in vitro; they do not show that that level of inhibition inhibits
pregnancy or even that it can be achieved in a mammalian subject. None of
the other examples substantively contribute to the enablement of the method
defined by claim 1.
The Miettinen paper does not supply the enabling guidance missing
from the Specification. First, Miettinen was published after the effective
filing date of the present application and therefore can be relied on only to
confirm assertions made in the Specification. See In re Glass, 492 F.2d
1228, 1232 (CCPA 1974) (“[A]pplication sufficiency under § 112, first
paragraph, must be judged as of its filing date. 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.” (emphasis in original)). The Specification does not assert
that drugs that affect plasma cholesterol levels, without affecting SR-BI
activity, can inhibit pregnancy. In addition, as discussed above, Appellant
has pointed to no evidence in the record that would show that cholesterol-
2 Miettinen et al., “Abnormal lipoprotein metabolism and reversible female
infertility in HDL receptor (SR-BI)-deficient mice,” Journal of Clinical
Investigation, Vol. 108, pp. 1717-1722 (2001).
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