Appeal No. 97-1999
Application 07/390,745
compound possessing partial agonist properties for the
strychnine insensitive glycine modulatory site of the N-
methyl-D-aspartate receptor complex in an amount effective to
alleviate the symptoms of any neuropsycho-pharmacological
disorder.
We recognize that In re Marzocchi, 439 F.2d 220, 224,
169 USPQ 367, 369-370 (CCPA 1971), instructs:
[I]t is incumbent upon the Patent Office, whenever a
rejection . . . [under section 112, first paragraph] is
made, to explain why it doubts the truth or accuracy of
any statement in a supporting disclosure and to back
up assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested
statement.
Nevertheless, Nadler and Marvizon themselves strongly suggest,
and appellants have argued consistent with that suggestion,
that persons having ordinary skill in the art reasonably could
not have predicted success in treating
neuropsychopharmacological disorders with agonists,
antagonists, or partial agonists which are structurally
similar to ones previously found to exhibit moderate success
either in in vitro tests or in vivo tests using model animals.
See pages 8-9 of Transmittal of Art, filed August 19, 1997,
which we invite the examiner to study. In an unpredictable
art, Section 112 requires that the scope of the claimed
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