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of enablement to be that there are no concerns of inoperability or utility, 1A rejection under 35 U.S.C. § 101 has been withdrawn.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. 3Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007