Appeal No. 2003-0890 Page 4
Application No. 09/706,683
Discussion
1. Enablement.
The examiner raises the issue as to whether one skilled in the art would be able
to use the compounds encompassed by claims 1 through 3 that have "heteroaryls both
mono- and bicyclic at every R variable." Examiner's Answer, page 4. The examiner
explains that the specification states that some of the claimed compounds are partial
agonists while others are antagonists. Id., pages 4-5. The examiner concludes "[i]t
remains the examiner's position that the amount of guidance presented in the
specification as to which (het-substituted) compounds having the necessary 5-HT1A
agonist and/or antagonist activity is minimal and consequently applicants' disclosure
provides merely an invitation of those of ordinary skill in the art to determine which
compounds have agonist activity, and which are antagonistic or have a mixed profile of
activity." Id., page 5.
In considering the issue, we note that the examiner has not raised any objection
to the claims in terms of how to make, but, rather, the examiner's concern is directed to
the so-called heteroaryl compounds in regard to the how to use requirement of this
section of the statute. The examiner is concerned that the specification does not
provide guidance as to which compounds have 5-HT1A agonist and/or antagonist
activity. If the examiner's concern is based upon the thought that a person of skill in the
art must be able to assign agonist and/or antagonist activity to each compound included
in the rejected claims only by analysis of the structure of the compound, the rejection is
based upon the wrong legal standard.
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