Appeal No. 2000-0894
Application No. 08/437,884
Since we conclude that the references do not support a prima facie case
under 35 U.S.C. § 103, we need not address Appellants’ evidence of unexpected
results.
2. The nonenablement rejection
The examiner rejected claim 65 under 35 U.S.C. § 112, first paragraph,
“because the specification, while being enabling for a method of treating
cardiovascular disorders with NO immunoglobulins, does not reasonably provide
enablement for preventing cardiovascular disorders with NO immunoglobulins.”
Examiner’s Answer, page 4 (emphasis added). The examiner explains that “[t]he
specification fails to enable the ‘prevention’ of cardiovascular disorders. . . .
Prevention has been viewed as requiring the absolute and complete elimination
of any cardiovascular disorders and the specification fails to enable a claim of
that nature.” Id., page 5.
We begin our analysis with the examiner’s claim construction. See In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971) (“[W]hen the
first paragraph [of 35 U.S.C. § 112] speaks of ‘the invention,’ it can only be
referring to that invention which the applicant wishes to have protected by the
patent grant, i.e., the claimed invention. For this reason the claims must be
analyzed first in order to determine exactly what subject matter they
encompass.”). When construing claims during prosecution, “the PTO applies to
the verbiage of the proposed claims the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of ordinary
skill in the art, taking into account whatever enlightenment by way of definitions
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