Appeal No. 2001-0400
Application No. 08/751,624
1988). As part of that analysis, the examiner finds that “a large proportion” of
phenothiazine dyes would be “inoperative” in the claimed process; that “the
invention is complex and unpredictable,” and that “the prior art indicates that
most related dyes [i.e., related to methylene blue] are not effective for the
claimed functions.” See the Examiner’s Answer, pages 9-10. The examiner,
however, cites no evidence and provides no explanation for any of the findings
that lead him to conclude that the claims are not enabled.
Appellants, on the other hand, cite several sources of evidence in the
record as supporting enablement. See the Appeal Brief, pages 19-21, and the
Reply Brief, page 2. First, the specification itself discloses use of six
phenothiazine dyes to treat a blood product, and concludes that “[t]hionine (Th),
azure A (AzA), azure C (AzC), and TB [toluidine blue] were of similar efficacy as
MB [methylene blue].” See page 20. In addition, Appellants filed at least two
declarations under 37 CFR § 1.132 that provide additional evidence of
enablement. See declarations of Harald Mohr attached to Paper Numbers 7 and
9, filed Jan. 28, 1998, and June 10, 1998, respectively. 2
In addition to the evidence cited by Appellants, we also note that Heinmets
tested nine phenothiazine dyes for their effectiveness in inactivating viruses in
plasma and found that all of them were at least somewhat effective. See Table 1
2 Appellants also cite “the testimony of Dr. Mellors” as showing evidence of enablement. See the
Appeal Brief, page 20. Appellants presumably refer to the declaration of John W. Mellors, which
was submitted together with several other declarations on July 6, 1998 (attached to Paper No.
21). The Mellors declaration, however, was executed for submission with respect to a different
patent application. It is unclear how Dr. Mellors’s opinion—regarding the enablement of different
claims by a different specification—would be relevant to the rejection of the present claims.
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