Appeal No. 1997-2336
Application No. 08/256,065
52 USPQ2d 1129, 1136 (Fed. Cir. 1999) ("We have also noted that all of the factors need
not be reviewed when determining whether a disclosure is enabling.") (citing Amgen, Inc. v.
Chugai Pharm. Co., Ltd. , 927 F.2d 1200, 1213, 18 USPQ2d 1016, 1027 (Fed. Cir.
1991)). The examiner, additionally, notes the lack of working examples describing the
prevention of any kind of cancer by transdermal delivery of aspirin. (Answer, page 4).
Further, the examiner notes that the claims are not limited to a particular type of cancer but
are directed to the treatment of "cancer generally". (Answer, pages 3 and 4). The
examiner concludes that (Answer, page 5):
the instant specification does not provide enablement for the
prevention of any cancer via the transdermal administration of
aspirin, even at the disclosed blood levels.
As explained in PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564, 37
USPQ2d 1618, 1623 (Fed. Cir. 1996):
The test is not merely quantitative, since a considerable amount of
experimentation is permissible, if it is merely routine, or if the
specification in question provides a reasonable amount of guidance
with respect to the direction in which the experimentation should
proceed to enable the determination of how to practice a desired
embodiment of the invention claimed. Ex parte Jackson, 217 USPQ
804, 807 (Bd. App. 1982).
In the case before us, the examiner has established that the specification is lacking in
guidance as to the use or application of the transdermal system for the prevention of
cancers generally. Overall, we find that the examiner provides both evidence and sound
scientific reasoning in support of her position. We, therefore, find no error in
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