Ex parte KOSLEY JR. et al. - Page 9




          Appeal No. 1997-2188                                                        
          Application 08/137,440                                                      
          disclosed or even contemplated.  The second method requires                 
          administering to a mammal with memory dysfunction                           
          characterized by decreased cholinergic function the compound                
          6-O-demethylgalanthamine by administering to said mammal in an              
          amount sufficient to inhibit the formation in the mammal of                 
          AChE the compound of Claim 4 which metabolizes to 6-O-                      
          demethylgalanthamine.  Like the first method, the second                    
          method is open to other steps and ingredients, both disclosed               
          but not claimed ones and steps and ingredients neither                      
          disclosed nor even contemplated.                                            
                       THE "HOW TO USE" REJECTION UNDER  112                         
               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                
          prima facie case of lack of enablement.  In re Strahilevitz,                
          668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982); In re                   
          Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976); In                
          re Armbruster, 512 F.2d 676, 677, 678, 185 USPQ 152, 153 (CCPA              
          1975); In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370                
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