Appeal No. 1997-2742
Application 08/348,815
from Axon, we hold that claims 7, 8, 10 and 11 are based on a non-enabling disclosure.
In so holding, we have not overlooked this statement in the specification, page
7, lines 18-20:
Moenomycin is able to penetrate the mucus layer of the gastric mucous
membrane and to reach the actual site of residence of the infecting micro-
organism.
According to appellants, that statement provides reasonable assurance that moenomycin,
when used in vivo, will “reach the actual site of residence of the infecting microorganism”
and effectively control H. pylori infection. (Appeal Brief, paragraph bridging pages 7 and
8). We disagree. The flaw with appellants’ argument is that the above-quoted statement in
the specification is unsubstantiated by facts or evidence. It stands by itself. Here, the
examiner established a prima facie case of non-enablement of claims 7, 8, 10 and 11, and
appellants’ mere statement in the specification, unsupported by evidence, does not serve
to rebut the prima facie case. Cf. In re
De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) (conclusory
statements in specification cannot establish patentability).
We also note appellants’ acknowledgment that “[m]oenomycin has not been used
until now in human medicine” (specification, page 7, line 13). Under these circumstances,
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