Appeal No. 96-0965
Application 08/054,548
vitro, and that the specification's in vitro results are not correlative or predictive of a
synergistic effect in vivo. However, the examiner does not repeat or refer to the
rejection under 35 U.S.C. § 101 in the Examiner's Answer. The only plausible
interpretation which these facts permit is that the rejection under 35 U.S.C. § 101 has been
dropped. See Paperless Accounting, Inc. v. Bay Area Rapid Transit System, 804 Fd.2d
659, 663, 231 USPQ 649, 652 (Fed. Cir. 1986). The sole issue on appeal is whether the
examiner erred in rejecting claim 8 under 35 U.S.C. § 112, first paragraph, as based on a
non-enabling disclosure.
THE MERITS
The first paragraph of 35 U.S.C. § 112 states that
The specification shall contain a written description of the invention, and of
the manner and process of making and using it, in such full, clear, concise
and exact terms as to enable any person skilled in the art to which it pertains,
or with which it is most nearly connected, to make and use the same, and
shall set forth the best mode contemplated by the inventor of carrying out his
invention (emphasis added).
This provision calls into play the "how-to-make" and "how-to-use" requirements of the
statute. In our judgment, Appellants' specification is replete with information teaching
persons skilled in the art how to make and how to use the claimed invention.
The specification teaches that the first and second compounds recited in claim 8
5
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