Appeal No. 94-2100
Application 07/902,109
A reference relied on by the appellant is:
Molchan, et al. (Molchan), “Increased Cognitive Sensitivity to
Scopolamine With Age and a Perspective on the Scopolamine Model,”
Brain Research Reviews, vol. 17, pp. 215-226 (1992).
Claims 1, 2, 5, 8 and 10 stand rejected under 35 U.S.C. §
112, first paragraph, as being based on a non-enabling
disclosure.
We reverse.
The examiner argues that the specification fails “to
positively assert that the claimed compounds have utility.”
Answer, p. 3. According to the examiner, “the evidence presented
[in the specification] is not sufficient to demonstrate that the
claimed compounds possess actual utility in currently available
form.” Id.
Although it appears that the rejection is based on the issue
of whether the claims have a practical utility, a § 101 issue,
the rejection in the Answer, and throughout prosecution of the
application, has been under the first paragraph of § 112.
Therefore, our consideration of the issues is limited to whether
the specification would have enabled one skilled in the art to
“make and use” the claimed compositions; i.e, whether the
specification satisfies the requirements of § 112, first
paragraph.
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