Appeal No. 1996-2468
Application 08/091,899
Geisthovel et al. (Geisthovel), “Insulin-like growth factors and thecal-granulosa-cell
function,” Human Reproduction, Vol. 5. No. 7, pp. 785-99 (1990)
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejection, we make reference to the Examiner's
Answer (Paper No. 18½, mailed October 31, 1995) for the examiner's complete reasoning
in support of the rejection, and to the appellant's Brief (Paper No. 18, filed July 24, 1995)
and Reply Brief (Paper No. 19, filed December 4, 1995) for the appellant's arguments
thereagainst. As a consequence of our review, we make the determinations which follow.
DECISION ON APPEAL
Claims 1-13 stand rejected under 35 U.S.C. § 112, first paragraph for failing to
1
teach how to use the claimed invention.
The examiner has admitted on the record that utility of the claimed invention has
been established. Examiner’s Answer, page 5. Therefore, we interpret the examiner’s
position of lack of enablement to be that there are no concerns of inoperability or utility,
1A rejection under 35 U.S.C. § 101 has been withdrawn. Examiner’s Answer, page
5.
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