Appeal No. 1997-2336
Application No. 08/256,065
Discussion
The rejection under 35 U.S.C. § 112, first paragraph
Claims 27-35:
As stated in Genentech Inc. v. Nova Nordisk A/S, 108 F.3d 1361, 1366, 42
USPQ2d 1001, 1005 (Fed. Cir. 1995):
Patent protection is granted in return for an enabling disclosure of an
invention, not for vague intimations of general ideas that may or may not be
workable. See Brenner v. Manson, 383 U.S. 519, 536, 148 USPQ 689, 696
(1966) (stating, in context of the utility requirement, that “a patent is not a
hunting license. It is not a reward for the search, but compensation for its
successful conclusion.)
When the issue of enablement is raised under 35 U.S.C. § 112, first paragraph, the initial
burden is on the Patent and Trademark Office to establish reasons why one skilled in the
art would not believe the objective statements of enablement in the specification. In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
The examiner urges that (Answer, paragraph bridging pages 2-3):
[t]he specification does not reasonably provide enablement for
prevention of any and all cancers via transdermal
administration of acetyl salicylic acid. The cancer therapy art
remains highly unpredictable, and no examples exists for
efficacy of a single compound or product against cancer
generally. For example, certain cancers/tumors are
dependent upon estrogen for their induction or stimulation (e.g.
breast tumors) and others are not.
Thus, the issue presented in this appeal is whether the appellants' disclosure would
have enabled one skilled in this art to use the claimed invention throughout its scope
without undue experimentation.
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