Appeal No. 1997-2336
Application No. 08/256,065
the language at page 4 of the Answer where, in discussing the relevance of Thun I, the
examiner states that "even if aspirin was shown to be indisputably effective in reducing the
risk of fatal colon cancer, that finding would not be predictive of aspirin preventing any and
all cancers in general." Since "indisputably effective" is not the test of whether the
disclosure of the application is enabling for that which is claimed, the record is not clear as
to the rejection of claim 36. For these reasons, we vacate the rejection of claim 36 under
35 U.S.C. § 112, first paragraph. On return of the application to the examining group, we
would encourage the examiner to step back and consider the evidence of record, including
the Thun I reference, and determine whether the facts and evidence would reasonably
support the rejection of claim 36 under 35 U.S.C. § 112, first paragraph, using the factors
set forth in Wands, supra.
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b) we enter the following new ground of
rejection.
Claims 27-29 are rejected under 35 U.S.C. § 112, first paragraph, as failing to find
adequate written description in the application as filed for the presently claimed
invention. In pertinent part, claim 27 provides:
said transdermal therapeutic application system comprising a
matrix containing a substance such that hydrolysis of acetyl
salicylic acid is precluded or at least greatly reduced; and said
substance being selected from the group consisting of dioctyl
cyclohexane, dioctyl cyclohexane dissolved in n-heptane,
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