concurring.
I concur in the judgment and in most of the court’s opinion. With respect to the issue of priority, I agree that because of a failure to satisfy the written description requirement, Chiron is not entitled to priority back to 1984 for claims broadly construed to incorporate chimeric antibodies. I disagree with the court, however, in holding that the district court erred when it sustained the jury’s verdict that the 1984 application did not enable the chimeric an*1262tibodies claimed in the '561 patent. I would uphold the jury’s verdict in that regard. In my view, the jury permissibly concluded that the 1984 application, like the 1985 and 1986 applications, did not enable chimeric antibodies.
Citing In re Hogan, 559 F.2d 595 (CCPA 1977), the court holds that because it would be impossible for an applicant “to disclose knowledge invented or developed after the filing date” of the application, and because “the creation of chimeric antibodies first occurred after the 1984 application,” the timing of the application and the development of chimeric antibody technology “precluded any enablement analysis at all.” To be sure, the enablement issue as to the 1984 application does not affect the outcome of this case, because the court properly finds that the 1984 application failed to satisfy the written description requirement and the patentee therefore was not entitled to priority as of the date of the 1984 application. Nonetheless, I do not agree that the enablement requirement is inapplicable to the 1984 application.
Section 112, paragraph 1, of the Patent Act requires that an applicant who wishes to claim property rights in an invention must bear the burden of demonstrating enablement by showing the public how to make and use the invention. As applied to this case, that principle would require the 1984 application to enable the invention claimed in that application. In my view, hi re Hogan does not prevent us from reaching that conclusion.
In Hogan, the PTO rejected certain claims for lack of enablement after concluding that, in light of post-application developments, the claim scope was broad enough to read on certain embodiments that were not enabled by the application. The Court of Customs and Patent Appeals reversed, holding that it was enough that the application enabled the claims as construed in light of the state of the art at the time of filing. As the court explained, “if appellants’ 1953 application provided sufficient enablement, considering all available evidence (whenever that evidence became available) of the 1953 state of the art, i.e., of the condition of knowledge about all art-related facts existing in 1953, then the fact of that enablement was established for all time and a later change in the state of the art cannot change it.” 559 F.2d at 605.
I have no quarrel with the holding of Hogan — that enablement must be judged in light of the state of the art at the time of the application. What must be guarded against, in my view, is to interpret Hogan to hold that claims that are enabled by the original application may be construed broadly enough to encompass technology that is not developed until later and was not enabled by the original application. Although there is language in Hogan that could be read to support such a result, this court has recently (and properly, in my view) expressed reservations about reading Hogan that broadly. See Plant Genetic Sys., N.V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1340-41 (Fed.Cir.2003).
In Plant Genetic Systems, the court explained that Hogan “simply held that one could not use a later-existing state of the art to invalidate a patent that was enabled for what it claimed at the time of filing.” 315 F.3d at 1340. This makes perfect sense because, as the Hogan court explained, “The use of a subsequently-existing improvement to show lack of enablement in an earlier-filed application on the basic invention would preclude issuance of a patent to the inventor of the thing improved, and in the case of issued patents, would invalidate all claims ... therein.” 559 F.2d at 606. The court in Hogan did not take the additional step of holding that the claims in that case should be construed to encompass the later-arising technology. *1263In fact, Hogan explicitly declined to construe the claims at issue in that case, although the court suggested in dictum that the scope of the claims might be broad enough to encompass the later-arising technology that was at issue. Id. The court in Plant Genetic Systems noted that the technology that was developed after the application was filed (and thus was not enabled by the application) fell within the scope of the claims if the claims were broadly construed, but added that “the claims (albeit with a narroiver scope) might be nevertheless enabled in view of the state of the art then existing.” 315 F.3d at 1341 (emphasis added). Plant Genetic Systems further cautioned against using “the dicta from Hogan” to “expand the coverage of claims, yet create a new, lower standard of enablement.” Id.
I think the proper approach, suggested in the concurring opinion in Hogan and in Plant Genetic Systems, is to address cases of new technology by construing claims, where possible, as they would have been understood by one of skill in the art at the time of the invention, and not construing them to reach the as-yet-undeveloped technology that the applicant did not enable. That approach preserves the benefits of patent protection for the invention that the applicant has actually conceived and enabled, without extending those benefits for an invention that the applicant may not have conceived and certainly has not enabled.
In this case, however, the patentee is not seeking to preserve the validity of its claims by construing them in accordance with the state of the technology at the time of the invention. Instead, Chiron is arguing that the 1984 application provides support for claims covering technology that was not in existence at that time. In that setting, where the claims are accorded a scope that exceeds the scope of the enablement, I would hold that the claims are not entitled to priority as of 1984, not only because of a failure to satisfy the written description requirement, but also because the 1984 application does not enable the asserted claims. I would therefore uphold the jury’s verdict of lack of enablement not only as to the 1985 and 1986 applications, but as to the 1984 application as well.