Appeal No. 1997-1856
Application 08/142,284
All in all, we believe that the specification imparts ample information enabling any
person skilled in the art to use the claimed compounds throughout their scope without
undue experimentation. Therefore, we disagree with the examiner's conclusion that the
specification does not satisfy the “how to use” requirement of 35 U.S.C. § 112, first
paragraph.
We have carefully reviewed the Examiner's Answer (Paper No. 16) and
Supplemental Answer (Paper No. 18). In our judgment, however, the examiner does not
adequately explain why she doubts the truth or accuracy of any statement in appellant's
supporting disclosure. Nor does the examiner back up assertions of her own with
acceptable evidence or reasoning inconsistent with the contested statement. See In re
Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). In this regard,
we find that the examiner's reliance on Kruse and Levitzki is misplaced. Those references
relate to compounds structurally distinct from and not analogous to the instantly claimed
compounds. In our judgment, therefore, the discussion of tyrosine kinase inhibiting activity
in Kruse or Levitzki does not constitute reason to doubt the objective truth of statements in
the specification which are relied on by appellant for enabling support. In re Marzocchi,
439 F.2d at 223, 169 USPQ at 369 (CCPA 1971).
To the extent that the examiner would find working examples of “how to use” the
claimed compounds desirable, we agree. As the court cautioned in In re Strahilevitz,
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