Appeal No. 95-1083
Application No. 08/004,444
flow analysis, correlate to treating the above disease states and disorders.
(Emphasis added).
Example 2, at page 50 of the specification, specifically exemplifies the use of the stopped-
flow analysis to demonstrate that the manganese (II) complex of Example 1 is an effective
catalyst for the dismutation of superoxide. The examiner has addressed the use of the
stopped-flow analysis test by concluding (Answer, pages 4 and 5) that: "the in vitro
stopped flow kinetic analysis assay have been considered but are not deemed persuasive
since the same assay is not deemed predictive of utility in the treatment or prevention of
inflammatory bowel disease, or any of the other diseases encompassed by the claims, in
the absence of evidence in support of the same." The examiner's response fails to
provide any facts or evidence to support this conclusion that the results from "stopped flow
kinetic analysis" would not correlate to the treatment of the disclosed disease states and
disorders.
As explained in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37
USPQ2d 1618, 1623 (Fed. Cir. 1996):
In unpredictable art areas, this court has refused to find broad generic
claims enabled by specifications that demonstrate the enablement of only
one or a few embodiments and do not demonstrate with reasonable
specificity how to make and use other potential embodiments across the full
scope of the claim. See, e.g. In re Goodman, 11 F.3d 1046, 1050-52, 29
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