Appeal No. 96-1055
Application 07/727,331
insufficient for the breadth of the claims, and argues that
the
dosages are speculative (answer, third and fifth pages) . The 2
examiner considers the specification to be merely an
invitation to carry out excessive experimentation (answer,
sixth page). These arguments are not well taken because they
are not supported by the required evidence or sound technical
reasoning.
The examiner argues that appellants do not disclose any
in vivo data in their specification or provide a correlation
between the in vitro data therein and in vivo data (answer,
third through sixth pages). This argument is not persuasive
because it is directed toward the issue of utility and the
examiner has not made a utility rejection. “Office personnel
should not impose a 35 U.S.C. 112, first paragraph, rejection
grounded on a ‘lack of utility’ basis unless a 35 U.S.C. 101
rejection is proper.” Manual of Patent Examining Procedure
§ 2107(IV) (7th ed., July 1998).
2The pages of the answer are not numbered.
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