Appeal No. 1999-1280
Application No. 08/379,813
note that amendments after a final rejection are not a matter of right. See 37 CFR §
1.116 and § 1.195 and MPEP §§ 714.12-714.13, 1207 and 1208.03. In addition, we
note the non-entry of an amendment is a petitionable, not an appealable, issue. See
37 C.F.R. § 1.181. Therefore, the “proposed amended claims” are not before this
Merits Panel for review.
According to the examiner (Answer, pages 6-7):
The specification is not enabling for the invention as claimed
because there is no teaching of other BMP’s. Supraalveolar
lesions include melanoma, amalgam tattoo to radiation
osteonecrosis and these disorders are not enabled by the
specification. Further, the long term augmentation of alveolar
ridges which are under pressure from dentures is a notably difficult
achievement and no evidence for the claimed method is shown for
such a treatment.
Here, the examiner did not perform the fact-finding needed in order to reach a
proper conclusion that the specification does not enable the claimed invention. The
enablement requirement of 35 U.S.C. § 112, first paragraph, requires that the patent
specification enable “those skilled in the art to make and use the full scope of the
claimed invention without ‘undue experimentation.’” Genentech, Inc. v. Novo Nordisk
A/S, 108 F.3d 1361, 1365, 42 USPQ2d 1001, 1004 (Fed. Cir. 1997)quoting In re
Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007