Appeal No. 1997-2751
Application No. 08/159,096
out. The example also does not specify what compound was administered,
further suggesting that a completed experiment is not being reported.
Confusingly, however, the example then presents “results,” suggesting
that some work had been done. On close inspection, however, it is apparent that
no actual results are presented. Again, specific results are not reported for a
specific compound and the rate of bone mineralization is reported as “e.g. 76%
greater in the treated group than the controls” (emphasis added). We therefore
conclude that the “results” reported in the specification are no more than what the
inventors hoped to achieve in an actual experiment. The manner in which the
specification presents this example is confusing at best, and possibly misleading
to the casual reader, but the example appears to be merely prophetic, rather than
an actual working example.
We are aware of only one piece of evidence in the record that might be
interpreted to support enablement of the instant claims. Lenehan shows that at
one specific dosage, administration of ethane -1-hydroxy-1,1-diphosphonate
caused some beneficial effect on fracture healing. See page 505, right-hand
column (“Biomechanical evaluation of fracture sites in group 2 [0.1 mg/kg/day]
revealed fracture-healing characteristics that exceeded those of controls.”).
However, this isolated result is not sufficient to outweigh the other record
evidence indicating nonenablement, for two reasons. First, the compound
administered by Lenehan, although a diphosphonate, is not within the scope of
the instant claims. Second, Lenehan expressed surprise that any dosage of
ethane-1-hydroxy-1,1-diphosphonate would benefit fracture healing. See page
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