Appeal No. 1997-2751
Application No. 08/159,096
knowledge about the nature of fracture healing and the in vivo mechanism of
action of diphosphonates; that is, those of skill in the art expected that
diphosphonates would act to interfere with, rather than aid, fracture healing. In
addition, the state of the prior art was such that those skilled in the art would not
have considered practice of the claimed method to be feasible. Finally, the
specification lacks any working examples or actual data to counter the art-based
expectation that the claimed method simply would not work.
We conclude that the evidence of record provides sufficient basis for
doubting the assertions in the specification as to the scope of enablement, and to
shift the burden to Appellants “to provide suitable proofs indicating that the
specification is indeed enabling.” In re Wright, 999 F.2d at 1561, 27 USPQ2d at
1513.
Summary
We reverse the rejection of the claims as obvious over the references
cited by the examiner but enter a new ground of rejection based on non-
enablement.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg.
53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial review.”
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007