Appeal No. 95-4435
Application No. 07/833,146
record, nor does the examiner cite or rely on new prior art,
in rejecting the claims on appeal.2
The issue presented for review is whether the examiner
erred in rejecting claims 3 through 7, 10 through 14, 22 and
23 under 35 U.S.C. § 112, first paragraph, as based on a non-
enabling disclosure.
DISCUSSION
We shall not sustain this rejection.
We have carefully considered the position of the
examiner, as set forth in the Examiner's Answer, but find that
such is based on clearly erroneous fact-finding. For example,
the examiner states that "[w]hen, as in this case, the only
utility in the specification is in the treatment of humans,
the claimed compounds are held to the same standard of
enablement as said method of treatment claims" (Examiner's
Answer, page 5, first paragraph of section (10) Response to
Arguments, emphasis added). Compare the following statement
in the specification, page 7, lines 1 through 6:
2The record copy of the Examiner's Answer is not
paginated. For the sake of convenience, we have numbered the
pages running from 1 through 8.
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Last modified: November 3, 2007