Ex parte MCOSKER - Page 3




              Appeal No. 1996-3016                                                                                           
              Application 08/008,859                                                                                         


              Ettinger et al. (Ettinger), Postmenopausal Bone Loss Is Prevented by Treatment with Low-                       
              Dosage Estrogen with Calcium,” Annals of Internal Medicine, Vol. 106, pp. 40-45 (1987)                         
                      Claims 1 through 8, 10, 13, and 16 through 22 stand rejected under 35 U.S.C.                           
              § 112, first paragraph (enablement).  Claims 1 through 8, 10, 13, and 16 through 22 also                       
              stand rejected under 35 U.S.C. § 103.  As evidence of obviousness, the examiner relies                         
              upon “Applicant’s admissions,” Francis, Lindsay 1984, Lindsay 1985, Wronski and                                
              Chesnut.  We reverse all rejections.                                                                           
                                                      DISCUSSION                                                             
                      We initially note that the subject matter on appeal has only been examined to the                      
              extent the claims are directed to estradiol and 2-(3-pyridyl)-1-hydroxyethane-1,                               
              1-bisphosphonic acid in view of the election of species requirement.                                           
              1.  Enablement                                                                                                 
                      As stated at page 3 of the Answer, the examiner has concluded that “the disclosure                     
              is enabling only for claims limited [to] the amounts of each active agent in the alleged                       
              synergistic composition and use thereof which yields the surprising and unexpected                             
              synergistic result.”  The examiner’s requirement appears to be a result of appellant’s effort                  
              to rebut the examiner’s rejection under 35 U.S.C. § 103 by way of a declaration under 37                       
              CFR § 1.132 of appellant Jocelyn E. McOsker in which appellant characterizes the                               
              presented data as “synergistic.”                                                                               



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