Appeal No. 1996-2790
Application 08/102,176
DISCUSSION
1. Enablement
In stating the rejection at page 2 of the Examiner's Answer, the examiner first
indicates that “the disclosure is enabling only for claims limited as shown below.” What
appears “below” is the following paragraph:
A method is claimed, decreasing or blocking passage of bioactive
and toxic compounds by applying a compound shown to increase and toxic
compounds by applying a compound shown to increase passage of
bioactive and toxic compounds. There is no presentation of the conditions,
concentrations, compounds or adjuvants required to permit one of ordinary
skill in the art to practice this method on living mammals with expectation of
the claimed results, yet prior art shows this method with this compound
results in penetration (Rajadhyaksha, compound 27).
In reading the paragraph which appears “below,” it is not clear how the examiner would
have appellants limit the claims. The paragraph is all but incomprehensible.
If we were to make an educated guess as to what is concerning the examiner, it
would be that Rajadhyaksha describes the compounds which are used in the claimed
method as increasing, rather than decreasing, passage of active agents through the skin
of a mammal. In other words, Rajadhyaksha states that the compounds set forth in claims
46-49 operate in a manner opposite that claimed.
In considering this issue, we first note that the claims on appeal are limited to the
use of fifteen compounds, i.e., N-[(C -C ) straight chain acyl]-2-oxazolidiones.
6 20
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