Wednesday, August 21, 2013

Appellant wins on enablement in Ex parte Adams

from within Ex parte Adams

Reddy2 which describes “the cloning of a delta 6-desaturase from the cyanobacteria Synechocystis that is responsible for the conversion of linoleic acid (18:2) to gamma-linolenic acid (18:3 gamma) (id.). In addition, Appellants explain that “[a] delta 12-desaturase gene linked to the delta 6-desaturase gene was also identified [in Reddy] and expression of the delta 6- and delta 12-desaturases in Synechococcus deficient in both desaturases carried out to result in the production of linoleic acid and gamma-linolenic acid” (id.).

The footnote 2

AS Reddy et al. (Reddy), Isolation of a delta 6-desaturase gene from the cyanobacterium Synechocystis sp. Strain PCC 6803 by gain-of-function expression in anabaena sp. Strain PCC7120, 22(2) Plant Mol. Biol. 293-300 (May 1993) (PubMed Abstract). Attached to Appellants’ App. Br. as Exhibit C.

As to enablement

To satisfy the enablement requirement of 35 U.S.C. § 112, first paragraph, a patent application must adequately disclose the claimed invention so as to enable a person skilled in the art to practice the invention at the time the application was filed without undue experimentation. Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371-72 (Fed. Cir. 1999). We note, however, that “nothing more than objective enablement” is required, and therefore it is irrelevant whether this teaching is provided through broad terminology or “illustrative examples.” In re Marzocchi, 439 F.2d 220, 223, (CCPA 1971). As set forth in In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993):


Post a Comment

<< Home