Appeal No. 95-0386
Application No. 07/854,122
DISCUSSION
In rejecting the appealed claims under 35 U.S.C. § 112,
first paragraph, the examiner emphasizes the following claim
recitations: (1) "alkyl and/or hydroxy alkyl group" in claims
5 and 13; and (2) "amino acid analog" in claims 1 and 10.
Apparently, the examiner believes that these terms are "too
broad" and that the claims should be limited to a more
narrowly defined set of alkyl groups and amino acid analogs
set forth in the supporting disclosure (Examiner's Answer,
paragraph bridging pages 3 and 4; and page 7, first full
paragraph).
The examiner's subjective belief that the claims are "too
broad," however, is not supported by evidence or sound
scientific reasoning. As stated in In re Marzocchi, 439 F.2d
220, 224, 169 USPQ 367, 370 (CCPA 1971):
[I]t is incumbent upon the Patent Office, whenever a
rejection on this basis [lack of enablement] 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.
This the examiner has not done. In a nutshell, the examiner
has not provided sufficient reasons or evidence, on this
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