Appeal No. 2001-2646 Page 6
Application No. 08/463,951
The examiner’s basis of the rejection is that the scope of the R7 groups
recited in the claims encompassed a variety of functional groups that are
“unrelated” to the exemplified acetyl and t-butoxycarbonyl groups. This may well
be true, and the claims may indeed encompass inoperative embodiments, but
the examiner has not reasonably explained why the scope of R7 groups recited
in the claims would have required undue experimentation to distinguish the
operative embodiments from potentially inoperative ones. Therefore, she has not
carried the initial burden of showing that the claims are not enabled.
With regard to the method-of-treatment claims (claims 28-42, 61, and 62)
the examiner cited two other bases for nonenablement. First, “all method
claims[,] even those directed to specific uses (some [of] which the examiner
indicated would not be objected to if limited to just treating) embrace
‘preventing’.” Examiner’s Answer, page 7 (emphasis in original). In addition, the
examiner objected to the “huge list of disorders which is covered by the main
claim (61) and includes the list presented on pages 126-129 [of the specification]
which includes whole classes of disorders such as all forms of dementia
including Alzheimer’s, Down’s Syndrome, multiple sclerosis and all other
neurodegenerative disorders, all types of gastrointestinal disorders, all
op[h]thalmic diseases and the list goes on and on.” Examiner’s Answer, page 7.
The examiner cited Maggi as “mentioning a lot of potential uses” but
concluding that, while tachykinin antagonists may be useful for certain human
diseases, they were not (as of Appellants’ filing date) “a recognized class for
human therapy.” Id., page 8. The examiner cited Hoffman v. Klaus, 9 USPQ2d
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