Fiers v. Revel - 984 F.2d 1164 (Fed. Cir. 1993)

Rule:

Enablement is a question of law that the court reviews de novo. Enablement requires that the application contain a description that enables one skilled in the art to make and use the claimed invention. A specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of 35 U.S.C.S. § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support. Any party making the assertion that a U.S. patent specification or claims fails, for one reason or another, to comply with 35 U.S.C.S. § 112 bears the burden of persuasion in showing said lack of compliance.

Facts:

Appellee Haruo Sugano, appellant Walter C. Fiers, and appellants Michel Revel, and Pierre Tiollais (collectively, “Revel”) each filed a U.S. patent application for the deoxyribonucleic acid (DNA) that promoted viral resistance in human tissue. Sugano claimed the benefit of his March 19, 1980 Japanese filing date, Revel claimed the benefit of his November 21, 1979 Israeli filing date, and Fiers sought to establish priority under 35 U.S.C. § 102(g) based on prior conception coupled with diligence up to his British filing date on April 3, 1980. Records revealed that Sugano's Japanese application disclosed the complete nucleotide sequence of a DNA coding for B-IF and a method for isolating that DNA while Revel's Israeli application disclosed a method for isolating a fragment of the DNA coding for B-IF as well as a method for isolating messenger RNA (mRNA) coding for B-IF, but did not disclose a complete DNA sequence coding for B-IF. On the other hand, Fiers averred that his conception of the DNA of the count occurred when two American scientists, to whom he revealed outside of the United States a proposed method for isolating DNA coding for B-IF brought the protocol back to the United States. The United States Patent & Trademark Office Board of Patent Appeals & Interferences awarded priority of invention to Sugano. Appellants challenged the decision.

Issue:

Under the circumstances, was appellee Sugano entitled to the award of priority of invention?

Answer:

Yes

Conclusion:

The court affirmed the order awarding priority of invention to the appellee, holding that appellee's application was entitled to priority based on its date. The court ruled that appellee's application was enabling, as it set forth a detailed teaching of a method for obtaining the DNA, and satisfied the written description requirement. According to the court, appellant Fiers did not establish prior conception because conception of a DNA required a definition of the substance other than by its functional utility, and the existence of a workable method for preparing a DNA did not suffice. The court further held that appellant Revel was not entitled to the benefit of his Israeli application date because his specification did not contain a written description of the DNA; the description only provided a plan for obtaining the DNA.