Appeal No. 95-3732
Application 08/172,110
anterior horn cells where increasing motor strength is sought” (answer, page 4). 5 Appellants dispute
the examiner’s findings with respect to Bever et al in their brief (page 7) and reply brief (page 2),
unchallenged by the examiner.
We find no basis in the statements in the Bever et al article relied on by the examiner,
particularly in view of appellants’ arguments, which would lead one of ordinary skill in this art to
reasonably conclude that the aminopyridine compounds discussed therein would not have similar
pharmacological properties or utility. Thus, the examiner’s conclusions that the method of treatment
specified in the appealed claims is “unpredictable” and “would not necessarily provide appropriate
therapy” are indeed clearly speculative in nature as they are unsupported by the record as a whole.
Accordingly, the record on this appeal is devoid of a reasonable explanation why the assertions as to
the scope of objective enablement set forth in appellants’ specification are in doubt, including reasons
why the description of the invention therein would not have enabled one of ordinary skill in this art to
practice the claimed invention without undue experimentation as required by § 112, first paragraph,
enablement.
exposition of the respective positions advanced by the examiner and appellants.
5 The examiner’s conclusion appears to be at odds with her indication that claim 2 of record is objected
to along with claim 8 of record, apparently because both claims are drawn to allowable subject matter
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