Appeal No. 1997-1954
Application 08/154,903
1. ENABLEMENT
The examiner has set forth two different reasons why the claims on appeal are non-
enabled. The examiner first states on page 3 of the Examiner’s Answer that “The
specification does not teach or show what [sic, who] is susceptible to get the
desynchronization disorders and does not show how to the [sic] melatonin derivatives can
treat a mammal susceptible to the disorders. Second, the examiner states in the
paragraph bridging pages 3-4 of the Examiner’s Answer that the disclosure is “enabling
only for claims limited to treating the desynchronization disorders in a mammal with
melatonin derivatives according to pages 1-21. The specification does not show
ennoblement [sic] for treating the said disorders in a mammal suspectible [sic] to get the
disorder.”
The examiner has not begun to properly explain why a person skilled in the art
would not be enabled to make and use the claimed invention. While we doubt that the
examiner intends to require appellant to “limit” the claims to pages 1-21 of the
specification that is what the examiner stated. Furthermore, it is clear that the examiner
has limited his consideration of the issue to information provided in the specification but
even that analysis is incomplete. For example, the specification incorporates Short by
reference at page 13 for its discussion of the role melatonin can have in treating
desynchronization disorders. As the examiner recognized in the obviousness rejection,
Short also discusses the use of melatonin derivatives in treating such disorders. Yet the
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