Appeal No. 95-1618
Application 08/033,456
mere allegations that are unsupported by facts or evidence. Saying so does not make
it so! There does not appear to be a single instance in the specification teaching one
of ordinary skill how to use any single specific compound or how to treat or prevent
any one of the plurality of alleged deceases [sic, diseases]. It is not the purpose of the
disclosure to simply direct one of ordinary skill to the area of research where the
invention may be found or indicate what would be obvious to try. The purpose of the
disclosure is to set forth the invention in such clear and precise terms so as to teach
the skilled artisan how to make and use the invention without having to resort to
undue experimentation.
* * *
Appellants proffer that by an assay procedure the ability of the compounds of formula
I to inhibit interleukin-1 biosynthesis may be determined. Appellants’ specification
points to a broad area of subject matter wherein it might be obvious to try to find the
invention. It would require more than reasonable and routine experimentation to
make all the compounds encompassed by the claimed invention and then ferret out the
practical embodiments and reduce them to practice.
* * *
There is no evidence presented which clearly and reproducibly illustrates that there
is any utility for the claimed invention. There is no suggestion that any of the
disclosed utilities are attainable. Applicants’ claimed utility is generic in nature and
relates to [a] method of treatment by inhibiting a metabolic pathway. In order to
satisfy the requirement of utility, there must be disclosed [an] ultimate use and a
linkage between a claimed metabolic pathway and each disease and/or diseases
disclosed in the specification.
After consideration of appellants* arguments and the examiner*s position, we do not find the
examiner’s rejection to be sustainable. Applicants' statements of utility are not mere allegations, but
must be taken by the examiner as being true unless the examiner can present evidence and/or scientific
reasoning to cast reasonable doubt as to the utility of the compounds being asserted by applicants.
In the case before us, the examiner has not presented any factual showing or a detailed analysis of the
-10-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007