Ex parte SILER-KHODR - Page 3




                   Appeal No. 1996-2468                                                                                                                             
                   Application 08/091,899                                                                                                                           

                   Geisthovel et al. (Geisthovel), “Insulin-like growth factors and thecal-granulosa-cell                                                           
                   function,” Human Reproduction, Vol. 5. No. 7, pp. 785-99 (1990)                                                                                  

                                                                           OPINION                                                                                  
                            In reaching our decision in this appeal, we have given careful consideration to the                                                     
                   appellants’ specification and claims, to the applied prior art references, and to the                                                            
                   respective positions articulated by the appellant and the examiner.                                                                              
                            Rather than reiterate the conflicting viewpoints advanced by the examiner and the                                                       
                   appellant regarding the above-noted rejection, we make reference to the Examiner's                                                               
                   Answer (Paper No. 18½, mailed October 31, 1995) for the examiner's complete reasoning                                                            
                   in support of the rejection, and to the appellant's Brief  (Paper No. 18, filed July 24, 1995)                                                   
                   and Reply Brief (Paper No. 19, filed December 4, 1995) for the appellant's arguments                                                             
                   thereagainst.  As a consequence of our review, we make the determinations which follow.                                                          
                                                                DECISION ON APPEAL                                                                                  
                            Claims 1-13 stand rejected under 35 U.S.C. § 112, first paragraph for failing to                                                        
                                                                           1                                                                                        
                   teach how to use the claimed invention.                                                                                                          
                            The examiner has admitted on the record that utility of the claimed invention has                                                       
                   been established.   Examiner’s Answer, page 5.   Therefore, we interpret the examiner’s                                                          
                   position of lack of enablement to be that there are no concerns of inoperability or utility,                                                     


                            1A rejection under 35 U.S.C. § 101 has been withdrawn.  Examiner’s Answer, page                                                         
                   5.                                                                                                                                               
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