Clark argues on p. 7, l. 23 to p. 19, l22 that the ’907 app. fails to enable the Storer Claims. Storer’s response is that the skilled artisan, as of June 27, 2003, would have been able to make and use compounds of the Storer Claims without undue experimentation.
To be enabling, a specification need not teach how to make a compound if the skilled
person would have known how to do so at the time of filing. See Martin v. Johnson 4 , 454 F.2d
5 746, 751 (CCPA 1972) (holding that “the recognition of the structure of a chemical compound
ordinarily provides those skilled in the art with some information as to its synthesis.”); see also 6
Sugano v. Goeddel, Interf 7 . 105,334, Paper 509, at 24 (BPAI Nov. 15, 2012) (non-precedential)
8 (finding enablement, despite the absence of a method of making in the specification, because
9 such a method was known in the art at the time of filing), rev’d on other grounds, 617 F.3d 1350
(Fed. Cir. 2010); Univ. of Rochester v. G.D. Searle & Co. 10 , 358 F.3d 916, 921 (Fed. Cir. 2010)
11 (stating that a “description of a chemical compound without description of how to make and use
12 it” may be enabled if how-to-make and use it is “within the skill of one of ordinary skill in the
13 art.”). Thus, the recognition of the structure of a compound alone can be sufficient to provide an
14 enabling disclosure if “one reasonably skilled in the art could make or use the invention from the
15 disclosures in the patent coupled with information known in the art without undue
experimentation.” United States v. Telectronics Inc., 857 F.2d 778, 785 (Fed. Cir. 1988); Martin 16
454 F.2d at 751; Sugano Interf. 105,334, Paper 509, at 24; Univ. of Rochester 17 358 F.3d at 921.
One of Ordinary Skill In The Art Could Have Synthesized Compounds Of The Storer Claims Without Undue Experimentation
22 that the ’907 app. lacks enablement of Storer’s
21 involved claims because one of ordinary skill in the art could have not synthesized the
22 compounds of the Storer Claims without undue experimentation. Storer’s response is that the
23 skilled artisan, as of June 27, 2003, would have been able to make compounds of the Storer
Claims without undue experimentation. 24 ¶¶74-99.) Clark’s how-to-make enablement
5
1 argument comes down to two theories: (1) Clark primarily asserts that one of ordinary skill
2 would not have known how to synthesize nucleosides with a 2'-methyl (up)-2'-F (down)
3 configuration and therefore could have not synthesized nucleosides with what it calls a 2'-fluoro-
2'-C(H/F)3 configuration (see p. 9, l. 9 to p. 10, l. 16, p. 11, l. 17 to p. 12, l. 4, p. 12, l. 4 10 to p. 14,
l. 14, p. 14, ll. 8-9, p. 16, ll. 10-16, p. 18, l. 2 to p. 19, l. 5 1); and (2) Clark, in passing, asserts that
6 one of ordinary skill would not know how to couple C-linked bases to the sugar ring of the
nucleoside (see p. 14, ll. 8-9, p. 16, ll. 16-19, p. 19, ll. 7 1-5). As set forth below, Clark is wrong in
8 its first theory and its second theory is unsupported and irrelevant. (
To be enabling, a specification need not teach how to make a compound if the skilled
person would have known how to do so at the time of filing. See Martin v. Johnson 4 , 454 F.2d
5 746, 751 (CCPA 1972) (holding that “the recognition of the structure of a chemical compound
ordinarily provides those skilled in the art with some information as to its synthesis.”); see also 6
Sugano v. Goeddel, Interf 7 . 105,334, Paper 509, at 24 (BPAI Nov. 15, 2012) (non-precedential)
8 (finding enablement, despite the absence of a method of making in the specification, because
9 such a method was known in the art at the time of filing), rev’d on other grounds, 617 F.3d 1350
(Fed. Cir. 2010); Univ. of Rochester v. G.D. Searle & Co. 10 , 358 F.3d 916, 921 (Fed. Cir. 2010)
11 (stating that a “description of a chemical compound without description of how to make and use
12 it” may be enabled if how-to-make and use it is “within the skill of one of ordinary skill in the
13 art.”). Thus, the recognition of the structure of a compound alone can be sufficient to provide an
14 enabling disclosure if “one reasonably skilled in the art could make or use the invention from the
15 disclosures in the patent coupled with information known in the art without undue
experimentation.” United States v. Telectronics Inc., 857 F.2d 778, 785 (Fed. Cir. 1988); Martin 16
454 F.2d at 751; Sugano Interf. 105,334, Paper 509, at 24; Univ. of Rochester 17 358 F.3d at 921.
One of Ordinary Skill In The Art Could Have Synthesized Compounds Of The Storer Claims Without Undue Experimentation
22 that the ’907 app. lacks enablement of Storer’s
21 involved claims because one of ordinary skill in the art could have not synthesized the
22 compounds of the Storer Claims without undue experimentation. Storer’s response is that the
23 skilled artisan, as of June 27, 2003, would have been able to make compounds of the Storer
Claims without undue experimentation. 24 ¶¶74-99.) Clark’s how-to-make enablement
5
1 argument comes down to two theories: (1) Clark primarily asserts that one of ordinary skill
2 would not have known how to synthesize nucleosides with a 2'-methyl (up)-2'-F (down)
3 configuration and therefore could have not synthesized nucleosides with what it calls a 2'-fluoro-
2'-C(H/F)3 configuration (see p. 9, l. 9 to p. 10, l. 16, p. 11, l. 17 to p. 12, l. 4, p. 12, l. 4 10 to p. 14,
l. 14, p. 14, ll. 8-9, p. 16, ll. 10-16, p. 18, l. 2 to p. 19, l. 5 1); and (2) Clark, in passing, asserts that
6 one of ordinary skill would not know how to couple C-linked bases to the sugar ring of the
nucleoside (see p. 14, ll. 8-9, p. 16, ll. 16-19, p. 19, ll. 7 1-5). As set forth below, Clark is wrong in
8 its first theory and its second theory is unsupported and irrelevant. (