Appeal No. 1996-2240
Application No. 08/105,482
We affirm rejection V under the doctrine of obviousness-type double patenting
(provisional), and reverse rejections I through IV, VI and VII.
DISCUSSION
Enablement and Written Description
The claims on appeal are directed to a method of screening for a given disorder by
comparing the electrical signal pattern generated by multiple preselected constituents in a
biological sample from a test subject with a data base representative of the frequency
distribution of those same constituents in samples from epidemiologically significant
populations with, and without, that disorder. Some of the claims are limited to screening
for Alzheimer’s Disease or Parkinson’s Disease.
The rejection of claims 1 through 32 under 35 U.S.C. § 112, first paragraph, is
based on the written description and enablement requirements of the statute. On
inspection, however, we are unable to identify reasoning which would explain why the
specification does not provide adequate written descriptive support for the claimed
invention. All of the concerns raised by the examiner appear to have a bearing on whether
the claims are based on an enabling disclosure.
It is well settled that the examiner bears the initial burden of providing reasons why a
supporting disclosure does not enable a claim. In re Marzocchi, 439 F.2d 220,
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