Appeal No. 94-4260
Application 07/849,191
Since the newly-claimed subject matter differs from that
of the original claims, claim 15, we remind the appellant that
under the provisions of 37 CFR § 1.196(b), this Board can
make, without restriction, a new ground of rejection.
Moreover, we point out that even had the examiner withdrawn an
enablement rejection to claims directed to the same subject
matter as the appealed claims, that rejection can be
reinstated at any time during prosecution by either this Board
(under § 1.196(b)) or by the examiner.
II.
With respect to claim 1, the appellant’s overall position
is best summarized as: the procedure described in Example 1
would have enabled one skilled in the art to make and use the
claimed method of treatment without undue experimentation. 2
2We note the appellant’s statement that she “shared her
Example 1 findings with two close friends whom she trusted to
keep her secret. The two friends applied her Example 1
technique to their own bald spots with the results reported in
Examples 2 and 3.” Request for Reconsideration, p. 6. The
facts of this event are not before us, however, if prosecution
of this application is resumed, the appellant should make all
these facts of record so that the examiner can consider
whether they would affect the patentability of the claimed
method.
3
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