Appeal No. 1996-3016
Application 08/008,859
Ettinger et al. (Ettinger), Postmenopausal Bone Loss Is Prevented by Treatment with Low-
Dosage Estrogen with Calcium,” Annals of Internal Medicine, Vol. 106, pp. 40-45 (1987)
Claims 1 through 8, 10, 13, and 16 through 22 stand rejected under 35 U.S.C.
§ 112, first paragraph (enablement). Claims 1 through 8, 10, 13, and 16 through 22 also
stand rejected under 35 U.S.C. § 103. As evidence of obviousness, the examiner relies
upon “Applicant’s admissions,” Francis, Lindsay 1984, Lindsay 1985, Wronski and
Chesnut. We reverse all rejections.
DISCUSSION
We initially note that the subject matter on appeal has only been examined to the
extent the claims are directed to estradiol and 2-(3-pyridyl)-1-hydroxyethane-1,
1-bisphosphonic acid in view of the election of species requirement.
1. Enablement
As stated at page 3 of the Answer, the examiner has concluded that “the disclosure
is enabling only for claims limited [to] the amounts of each active agent in the alleged
synergistic composition and use thereof which yields the surprising and unexpected
synergistic result.” The examiner’s requirement appears to be a result of appellant’s effort
to rebut the examiner’s rejection under 35 U.S.C. § 103 by way of a declaration under 37
CFR § 1.132 of appellant Jocelyn E. McOsker in which appellant characterizes the
presented data as “synergistic.”
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