Appeal No. 1997-2336
Application No. 08/256,065
sufficient to meet the burden of demonstrating that the disclosure is enabling. The
examiner has established a prima facie case of lack of enablement which is sufficient to
support the rejections of claims 27-35 under 35 U.S.C. § 112, first paragraph, which
appellants have not overcome by arguments or convincing evidence. Therefore, the
rejection of claims 27-35 under 35 U.S.C. § 112, first paragraph, is affirmed.
Claim 36:
We vacate the rejection of claim 36 under 35 U.S.C. § 112, first paragraph, as
being based on a non-enabling disclosure for the following reasons. The record with
regard to this claim is less than clear. Claim 36 is directed to a therapeutic method
wherein the tumor prophylaxis is against tumor formation in the gastrointestinal tract. The
appellants in their principal Appeal Brief at page 6 state that claims 27-36 are grouped
together which is reasonably read as indicating that they stand and fall together. (37 CFR §
1.192(7)(1995)). Yet, in the Reply Brief of November 8, 1996 (Paper No. 18) at pages 1-
2, appellants separately argue claim 36 as being limited to the use of aspirin against tumor
formation in the gastrointestinal tract which reads on the use of aspirin to prevent colon
cancer. The examiner acknowledged receipt and entry of the Reply Brief in a letter mailed
November 26, 1996 (Paper No. 20),but failed to respond to the newly submitted
arguments relating to claim 36. Thus, we are left with no rebuttal to arguments explicitly
raised by the appellants and no indication whether these arguments taken with the
teaching of the Thun I would reasonably be considered persuasive. In this regard, we note
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