Appeal No. 1999-1407
Application No. 08/295,744
that those skilled in the art would not be able to produce such compounds in lesser
quantities and/or in a form that is not entirely homogeneous” for use as non-
therapeutic reagents.
Focusing on the use of the claimed compounds as therapeutic reagents, the
examiner finds (Answer, page 8) that Gura “expressly notes that no antisense
therapy has yet been shown to function. Such a negative teaching in the art
supports the rejection by providing prima facie [sic] evidence of non-enablement.”
However, as set forth, supra, and argued by appellants (Reply Brief, page 4) “there
is no requirement in the claims (or elsewhere) that the compounds be used solely in
antisense therapy, or that they function through any particular mechanism.”
Appellants argue (id.) that “[a]lthough the [e]xaminer contends that it would be
difficult to predict whether or not the claimed compounds can be used in antisense
therapy, the [e]xaminer fails to explain how this contention, even if true, could
possibly demonstrate the absence of a patentable use for the compounds.” We
agree with appellants, that the use of the claimed compounds is not limited to
antisense therapy. The examiner has not addressed the issue of enablement with
respect to appellants’ other disclosed uses for the claimed compound.
We recognized the examiner’s reliance on Morton International Inc. v.
Cardinal Chemical Co., 5 F.3d 1464, 1469-70, 28 USPQ2d 1190, 1194 (Fed. Cir.
1993). Specifically, the examiner finds (Answer, page 7) that “the [Morton] court
states on page 1194 that, ‘[o]n review of the record, there is considerable evidence
showing that those skilled in the art could not make the claimed compounds using
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007