Appeal No. 2001-0562 Page 8
Application No. 08/460,478
forth in In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir.
1993) it:
is incumbent upon the Patent Office, whenever a rejection on this
basis is made, to explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up assertions of
its own with acceptable evidence or reasoning which is inconsistent
with the contested statement. Otherwise, there would be no need
for the applicant to go to the trouble and expense of supporting his
presumptively accurate disclosure.
On this record the examiner failed to analyze the claimed invention with
reference to the factors set forth in Wands. In addition, the examiner failed to
provide the evidence necessary to support a rejection under 35 U.S.C. § 112,
first paragraph. We are unwilling to accept the examiner’s conclusion (Answer,
page 21) that “[t]he facts disclosed in Orkin et al., Neve, and Friedmann illustrate
that gene therapy is a highly unpredictable art.” Instead, we agree with
appellants (Brief, page14) that while “[t]he cited references … offer sweeping
generalizations – they do not address the invention recited in the claims on
appeal … [g]eneral conclusory statements regarding the state of the art are
insufficient.”
Accordingly, we reverse the rejection of claims 122 and 123 under 35
U.S.C. § 112, first paragraph, as being based on an insufficient disclosure to
support or enable how to make and/or use the claimed invention.
THE REJECTIONS UNDER 35 U.S.C. § 103:
The rejection of claims 81-100, 104-118, 122 and 123:
According to the examiner (Answer, page 14) ‘945 “teaches various
methods for gene transfer to neuronal and glial cells of the central nervous
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