The Board stated: "While we recognize that the prior art did not physically create the claimed proteins, the Federal Circuit in Donohue addressed this issue, noting "[it is not, however, necessary that an invention disclosed in a publication shall have actually been made in order to satisfy the enablement requirement." In re Donohue, 766 F.2d 53 1, 533 (Fed. Cir. 1985). See Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001) ("[Anticipation does not require actual performance of suggestions in a disclosure. Rather, anticipation only requires that those suggestions be enabling to one of skill in the art"). *** The burden rests with the Appellants to establish that the prior art is not enabling." For further developments, stay tuned to www.maierandmaier.com
Ex parte Chuang: DNA anticipates protein
In a recent non-precedential opinion, the Board of Patent Appeals and Interferences rejected claims directed towards an isolated protein based on prior art references directed towards mouse cDNA sequences. The prior art disclosed the amino acid sequence encoded by the cDNA; however, it did not produce the resulting protein nor identify it's biological function.
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