Appeal No. 95-2743
Application 08/023,016
Powder Co., v. E.I. DuPont De Nemours & Co., 750 F.2d
1569, 1576, 224 USPQ 409, 413 (Fed. Cir. 1984). The
Patent and Trademark Office Board of Appeals summarized
the point well when it stated:
The test is not merely quantitative, since a
considerable amount of experimentation is
permissible, if it is merely routine, or if the
specification in question provides a reasonable
amount of guidance with respect to the direction
in which the experimentation should proceed to
enable the determination of how to practice a
desired embodiment of the invention claimed.
Ex parte Jackson, 217 USPQ 804, 807 (1982).
As we discussed above, the examiner has not met her burden of establishing that
there is no effective treatment for dementia. In fact, the evidence of record, demonstrates
the contrary; i.e, numerous potential treatments for neurodegenerative diseases and
disorders are under consideration. In the case before us, all we have is the examiner’s
assertion that one skilled in the art cannot make and use the claimed invention without
undue experimentation. We do not find that the examiner has performed the fact finding
necessary to support this assertion. Accordingly, we reverse the rejection.
III.
Turning to the rejection under 35 U.S.C. § 103, we find that the examiner has cited
two references which allegedly render the claimed method unpatentable. Answer, p. 4.
However, we do not find any statement of a rejection. Rather than explaining why the
claimed invention would have been obvious in view of particular teachings in the cited
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