Appeal No. 93-4191
Application 07/831,627
appears that some of the patients described by Cotter ‘807,
might be within the breadth of the claims on appeal. However,
the burden is on the examiner, and not this merits panel, to
make such findings. In the event that the examiner does
determine that the patients described by Cotter ‘807, or any
other prior art reference, are encompassed by the claims, he
must clearly state, on the record, the factual basis for any
such findings and provide the appellants with a fair
opportunity to respond.
Alternatively, the examiner might consider whether the
specification would have enabled one skilled in the art to
“make and use” the claimed method as required by 35 U.S.C. §
112, first paragraph. The examiner should consider whether
the specifi-cation would have enabled one skilled in the art
to determine which patients are encompassed by the claims in
the first instance. That is, the examiner might consider
whether the teachings of the specification would have enabled
those skilled in the art, to identify those patients in which
the “gut bacteria flora is modified, reduced, or eliminated so
as to impair its ability to provide short chain fatty acids as
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