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
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007