Appeal No. 1997-0473
Application No. 07/870,985
Again, we have no response by appellants on this question. However, in view of the
confusion about the status of what could reasonably be argued to be a new ground of
rejection in the Examiner’s Answer, the confusion as to just what the examiner regards as
being enabled in the present case and the failure of both the examiner and appellants to
completely brief the issues raised by this rejection, we conclude that this rejection and the
issues raised thereby, is not presented in a form which would permit meaningful review.
Therefore, as to the rejection of the appealed claims under 35 U.S.C. § 112, first
paragraph, we vacate this rejection and remand the application to the examiner for
reconsideration and/or clarification of the basis for questioning patentability on this basis.
We would note that we do not authorize a supplemental examiner’s answer to address the
issues raised by this decision.
In view of our action with regard to this rejection it is not necessary for us to reach
the issues raised by the examiner’s arguments regarding whether the disclosure in support
of the appealed claims are enabling for the “prevention” of HEV infection. However, we
would note the we are less than enamored with the examiner’s definition of infection and
interpretation that "prevention of infection" would require that the virus in question be
prevented from entering the body at any level. It is our opinion, that one skilled in this art,
i.e., therapeutics or pharmacology, would, more likely than not, first turn to reference
materials more associated with the field of pharmacology or therapeutics than a general
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