Appeal No. 95-2743
Application 08/023,016
absence, is any response by the examiner to the teachings of these references. Absent
evidence to the contrary, we must presume that the appellants’ references reflect the
thinking of those skilled in the art with respect to useful treatments of neurodegenerative
disorders; i.e., that these references demonstrate that one skilled in the art would not
question the specification’s statement of utility.
Accordingly, the rejection is reversed.
II.
Turning to the rejection under the first paragraph of § 112, we find the examiner
argues that:
The following claims fail to identify a host with the treating [sic]:
4-19. Further, “a compound having anticonvulsant properties...etc.” is
broader than specific supporting embodiments.
Those claims are broader than warranted. As discussed
supra, there is no effective dementia treatment, and Applicants failed
to establish that Applicants’ in-vitro assay reasonably predicts
successful dementia therapy. Therefore, it would require undue
experimentation by one skilled in the art to employ the method
because she would have to determine whether it worked or not
without guidance from Applicants [Answer, pp. 3-4].
We find these arguments unpersuasive.
First, it is not clear what the examiner intends by her statement that claims 4-19 fail
to identify a host. These claims are dependent on claim 2 which identifies the host as a
“mammal.” The examiner has not raised any objection with respect to the
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