It has been well established that 35 U.S.C. § 112 contains both a written description requirement and an enablement requirement Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1341 (Fed. Cir. 2010) (en banc.). It has been further established that the standard for enablement as applied to meeting the requirements for 35 U.S.C. § 112 is different from the standard for enablement to determine if a disclosure is sufficiently enabled to anticipate a reference. Rasmusson v. Smithkline Beecham Corp., Case Nos. 04-1192, -1192 (Fed. Cir. June 27, 2005). Because of the different standards applied a disclosure in a prior art reference may be sufficiently enabling to anticipate a reference, but the same exact disclosure would not be sufficient to support a claim in a patent. Is the court now moving to a similar bifurcation of standards for written description?
This question is explored by Dennis crouch in the article "'Inherent Disclosure' in Priority Document is Sufficient to Satisfy Written Description Requirement" which is linked in this newsletter. In his article Professor Crouch discusses the case of Yeda Research and Development co., LTD., v Abbott GMBH & CO. KG slip opinion (Fed. Cir. 2016). In Yeda v Abbott, claims to a TNF-a binding protein (TBP) with a particular molecular weight and particular N-terminal sequence can be supported by a priority document that did not disclose the sequence of the TBP protein, yet fail to be anticipated by a prior art document showing isolation of a TBP protein having the exact same source, molecular weight, and properties as the Abbott protein. Scientifically, both parties and the court agreed that the prior art document would be understood to have disclosed the same protein. Nevertheless, the CAFC held that the priority document of Abbott inherently described the claimed protein and provided sufficient basis to establish priority while the prior art reference providing as much disclosure did not provide sufficient disclosure to anticipate. It will be interesting to see how this seemingly bifurcated standard plays out on appeal.
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