Appeal No. 1998-2089
Application 08/443,507
claimed compounds. We disagree. Again, the examiner has adequately responded to
applicants’ argument based on the “four assays” (Examiner’s Answer, pages 8 through
14). We note particularly the “maximal electroshock assay” described in the
specification, page 15, lines 3 through 9, which is said to be performed “by conventional
methods as described previously (Krall, et al., Epilepsia 1978; 19:409-428).”1 According
to applicants, they need make only one credible assertion of a specific utility for the
claimed invention to satisfy 35 U.S.C. § 101 and 35 U.S.C. § 112, first paragraph; and
the claimed compounds meet that test because they possess anticonvulsant activity
based on the anticonvulsant drug screening protocol described by Krall (Appeal Brief,
page 6). The examiner argues, however, that applicants have not followed Krall’s
standard procedure for performing the maximal electroshock assay (Examiner’s
Answer, page 13). Additionally, the examiner argues that the drug screening protocol
outlined by Krall involves a combination of three tests. Only one of those tests is the
maximal electroshock assay. As correctly found by the examiner, “[t]here is no
evidence that the rest of the standard screening protocol has been done” (Examiner’s
Answer, page 14, first paragraph). In conclusion, the examiner argues, and we agree,
that applicants performed only one test of the “three-screen protocol” outlined by Krall
for anticonvulsant drug screening; and even with respect to that test, the “maximal
electroshock assay,” applicants did not follow Krall’s standard procedure.
We also invite attention to In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400,
1404 (Fed Cir 1988), where the court enumerated a number of factors which may be
1 Applicants include a copy of the Krall reference as an attachment to their Appeal Brief.
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