Appeal No. 1997-1954
Application 08/154,903
examiner did not take such prior art knowledge into account in making his determination
that the claims are non-enabled.
Determining enablement of a claimed invention by focussing on the specification of
the application to the exclusion of the relevant prior art is legal error. “[A] specification
need not disclose what is well known in the art.” Genentech, Inc. v. Novo Nordisk A/S, 108
F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997). Absent
a fact-based statement of a rejection based upon the relevant legal standards, the
examiner has not sustained his initial burden of establishing a prima facie case of
non-enablement.
For these reasons, we reverse the examiner’s rejection of the claims under
35 U.S.C. § 112, first paragraph.
2. PRIOR ART REJECTION
In rejecting the claims the examiner states that Short teaches the use of melatonin
for treating desynchronization disorders in mammals. The examiner also relies upon the
passage of Short at column 7, lines 59-68 which reads as follows:
While the invention has been described with reference to the
administration of melatonin, other related indoles or indole
derivatives may be used. It has been shown that synthetic
melatonin analogs do express varying degrees of melatonin
agonist activity when tested on fish bioassay [citation of
Frohn].
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