Appeal No. 95-4471
Application No. 07/963,475
proteins not specifically exemplified or identified, the claims do require that both the
primers and proteins are known to be "related to said fibrotic condition."
To the extent that the examiner's rejection is premised on a position that appellants must
teach how to find other proteins and related cDNAs, we simply note that the claims are
directed to a method of diagnosis of a fibrotic disease and not to a method of identifying
proteins related to the disease condition. There is no need to look for additional cDNAs or
proteins, since the claims require only the use of those already known and shown to be
related to the fibrosing condition. It would be expected that, as studies of fibrotic disease
progress, other proteins related to the disease condition will be identified or discovered.
However, the examiner has provided no reason why the diagnostic method, presently
claimed, could not be readily modified to make use of such cDNAs and related proteins.
The examiner bears the initial burden of providing reasons for doubting the
objective truth of the statements made by applicant as to the scope of enablement. In re
Marzocchi, 439 F.2d 220, 223-24, 169 USPQ 367, 369-70 (CCPA 1971). On the record
before us, we conclude that the examiner has not established a reasonable basis for
questioning the sufficiency of the supporting specification with regard to the claimed
method of diagnosis.
The rejection under 35 U.S.C. § 112, first paragraph is reversed.
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