Appeal No. 96-3861
Application 08/114,251
As stated in In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA
1971),
It is incumbent upon the Patent Office, whenever a rejection on this basis
[lack of enablement] is made, to explain why it doubts the truth or accuracy or
any statement in a supporting disclosure and to back up assertions of its
own with acceptable evidence or reasoning which is inconsistent with the
contested statement.
Here, the examiner relies on Clozel, Mihara, Doherty and Stein as evidence casting doubt
on the truth or accuracy of Appellant's statement in the specification that all of the claimed
compounds are useful for treating hypertension. We disagree with the examiner's
analysis.
The references relied on by the examiner establish that endothelin was discovered
in 1988; that, since its discovery, there have been many advances pertaining to the
development of endothelin receptor antagonists for treating a variety of mammalian
diseases; but that many questions remain. Generally speaking, there is a measure of
unpredictability in this art as evidenced by Mihara's discussion of 27-O-caffeoyl
myricerone (50-235). Note Mihara's statement that the in vivo effect of 50-235 on reducing
blood pressure was "less potent than expected" from its in vitro activity (Mihara, page 38,
column 1, line 4). The compound 50-235 is not closely related structurally to the claimed
compounds.
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