Appeal No. 96-0926
Application No. 07/995,683
the examiner's position is his conjecture that a person under
hypnosis would not be conscious enough to perform the other
steps in appellant's treatment. While not entirely without
logic, the problem with the examiner's position is that there
is no evidence which supports the examiner's mere hypothesis.
The examiner has failed to make out a prima facie case of lack
of enablement as was his burden. Accordingly, we reverse the
rejection under the first paragraph of 35 U.S.C. § 112.
OTHER ISSUES
As we have noted above, appellant acknowledges in his
specification that acupressure and hypnosis are, respectively,
known therapies for treating various psychological and
physiological disorders (see page 2, lines 10 through 14 of
the specification). The prior art cited in the record
substantiates appellant's recognition.
We recommend that the examiner and appellant, upon return
of this application to the examining group, reconsider the
patentability of the claimed subject matter of claims 1
through 5 under 35 U.S.C. § 103 under the theory that the
conjoint use of two individually well-known therapies for
their combined
attendant functions would have been obvious. Compare In re
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