2164.06(b) Examples of Enablement Issues — Biological and Chemical Cases [R-10.2019]

2164.06(b) Examples of Enablement Issues — Biological and Chemical Cases [R-10.2019]

The following summaries should not be relied on to support a case of lack of enablement without carefully reading the case.

I. SEVERAL DECISIONS RULING THAT THE DISCLOSURE WAS NONENABLING

• (A) In Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 52 USPQ2d 1129 (Fed. Cir. 1999), the court held that two patents with claims directed to genetic antisense technology (which aims to control gene expression in a particular organism), were invalid because the breadth of enablement was not commensurate in scope with the claims. Both specifications disclosed applying antisense technology in regulating three E. coli genes. Despite the limited disclosures, the specifications asserted that the “[t]he practices of this invention are generally applicable with respect to any organism containing genetic material which is capable of being expressed … such as bacteria, yeast, and other cellular organisms.” Thus, the court construed the claims to encompass the application of antisense methodology in a broad range of organisms. Ultimately, the court relied on the fact that (1) the amount of direction presented and the number of working examples provided in the specification were very narrow compared to the wide breadth of the claims at issue, (2) antisense gene technology was highly unpredictable, and (3) the amount of experimentation required to adapt the practice of creating antisense DNA from E. coli to other types of cells was quite high, especially in light of the record, which included notable examples of the inventor’s own failures to control the expression of other genes in E. coli and other types of cells. Thus, the teachings set forth in the specification provided no more than a “plan” or “invitation” for those of skill in the art to experiment using the technology in other types of cells.
• (B) In In re Wright, 999 F.2d 1557, 27 USPQ2d 1510 (Fed. Cir. 1993), Wright’s 1983 application disclosed a vaccine against the RNA tumor virus known as Prague Avian Sarcoma Virus, a member of the Rous Associated Virus family. Wright claimed a vaccine “comprising an immunologically effective amount” of a viral expression product using functional language. Id. at 1559, 27 USPQ2d at 1511. The examiner rejected Wright’s claims covering all RNA viruses as well as all avian RNA viruses. The examiner provided a teaching that, in 1988, a vaccine for another retrovirus (i.e., HIV) remained an intractable problem. This evidence, along with evidence that the RNA viruses were a diverse and complicated genus, convinced the Federal Circuit that the invention was not enabled for either all retroviruses or even for avian retroviruses.
• (C) In In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993), Goodman’s 1985 application functionally claimed a method of producing protein in plant cells by expressing a foreign gene. The court stated that “[n]aturally, the specification must teach those of skill in the art ‘how to make and use the invention as broadly as it is claimed.’” Id. at 1050, 29 USPQ2d at 2013. Although protein expression in dicotyledonous plant cells was enabled, the claims covered protein expression in any plant cell. The examiner provided evidence that even as late as 1987, use of the claimed method in monocot plant cells was not enabled. Id. at 1051, 29 USPQ2d at 2014.
• (D) In In re Vaeck, 947 F.2d 488, 495, 20 USPQ2d 1438, 1444 (Fed. Cir. 1991), the court found that several claims to a chimeric gene capable of being expressed in Cyanobacteria cells were not supported by an enabling disclosure. The court determined that claims at issue were not limited to any particular genus or species of cyanobacteria and the specification mentioned nine genera and the working examples employed one species of cyanobacteria. The court then reasoned that the claims were not enabled after “[t]aking into account the relatively incomplete understanding of the biology of cyanobacteria as of appellants’ filing date, as well as the limited disclosure by appellants of the particular cyanobacterial genera operative in the claimed invention….”
• (E) In In re Colianni, 561 F.2d 220, 222-23, 195 USPQ 150, 152 (CCPA 1977), the court affirmed a rejection under 35 U.S.C. 112, first paragraph, because the claims were directed to a method of mending a fractured bone by applying “sufficient” ultrasonic energy to the bone, but applicant’s specification did not define what constituted a “sufficient” dosage or teach one of ordinary skill how to select the appropriate intensity, frequency, or duration of the ultrasonic energy.

II. SEVERAL DECISIONS RULING THAT THE DISCLOSURE WAS ENABLING

• (A) In PPG Indus. v. Guardian Indus., 75 F.3d 1558, 1564, 37 USPQ2d 1618, 1623 (Fed. Cir. 1996), the court found PPG’s claims to a UV-absorbing, ceramide-free glass enabled, even though PPG’s specification included several examples in which faulty UV transmittance data made it appear as though the production of a cerium oxide-free glass satisfying the UV transmittance limitation would be difficult, because the specification indicated that such glass could be made. The specification was also found to indicate how to minimize the cerium content while maintaining low UV transmittance.
• (B) In In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988), the court reversed the rejection for lack of enablement under 35 U.S.C. 112, first paragraph, concluding that undue experimentation would not be required to practice the claimed immunoassay using monoclonal antibodies to detect hepatitis B-surface antigen (HBsAg). The court found that the nature of monoclonal antibody technology was such that experiments first involve the entire attempt to make monoclonal hybridomas to determine which ones secrete antibody with the desired characteristics. The court found that the specification also provided considerable direction and guidance on how to practice the claimed invention and presented working examples, that all of the methods needed to practice the invention were well known, and that there was a high level of skill in the art at the time the application was filed. Furthermore, the applicant carried out the entire procedure for making a monoclonal antibody against HBsAg three times and each time was successful in producing at least one antibody which fell within the scope of the claims.
• (C) In In re Bundy, 642 F.2d 430, 434, 209 USPQ 48, 51-52 (CCPA 1981), the court ruled that appellant’s disclosure was sufficient to enable one skilled in the art to use the claimed analogs of naturally occurring prostaglandins even though the specification lacked any examples of specific dosages, because the specification taught that the novel prostaglandins had certain pharmacological properties and possessed activity similar to known E-type prostaglandins.