Appeal No. 1997-2182
Application 08/137,443
limited to "treating" memory dysfunction characterized by
decreased cholinergic function.
The method requires administering to a mammal with memory
dysfunction characterized by decreased cholinergic function an
amount of the compound of claim 1 sufficient to inhibit the
formation in the mammal of the enzyme AchE. As a "comprising"
claim the method does not exclude any other step or
ingredient, including steps or ingredients disclosed but not
claimed and even steps or ingredients neither disclosed or
even contemplated.
THE "HOW TO USE" REJECTION UNDER § 112
As we have noted above, the examiner, on page 1 of his
Answer, has dropped the rejection of claims 1 through 22 under
35 U.S.C. § 101. Accordingly, the only issue presented for
our consideration is the rejection of claims 1 through 22
under 35 U.S.C. § 112, first paragraph.
The examiner's rejection of the claims as being based on
a specification which fails to adequately teach "how to use"
the claimed invention is a rejection under the so-called
"enablement" requirement of the first paragraph of 35 U.S.C. §
112. It is incumbent upon the examiner in rejecting claims
under the first paragraph of 35 U.S.C. § 112, to establish a
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