The BPAI published today an important informative opinion today in the biotech area, in which it held that the prior art „teaching of the amino acid sequence of SEQ ID NO: 1 by Kawai without a teaching of the expressed protein product anticipate[s] an isolated protein comprising SEQ ID NO: l.“ Ex Parte Chuang, Appeal 2008-5143, application 11/147,849, Tech Center 1600 (BPAI 11/13/2008)(APJs Grimes, Lebovitz, and Fredman). (Although the decision is date 11/2008, I believe it was just posted today.)
In Ex Parte Chuang, the BPAI panel stated that: „In view of these conflicting positions, we frame the anticipation issue before us as follows: Does the teaching of the amino acid sequence of SEQ ID NO: 1 by Kawai without a teaching of the expressed protein product anticipate an isolated protein comprising SEQ ID NO: l?“ In affirming the anticipation rejection, the BPAI panel reasoned that:
„While we recognize that the prior art did not physically create the claimed proteins, the Federal Circuit in Donohue addressed this issue, noting „[ilt 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) („[Alnticipation 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.“
