Ex parte GOODSHIP et al. - Page 11


                  Appeal No. 1997-2751                                                                                     
                  Application No. 08/159,096                                                                               

                  knowledge about the nature of fracture healing and the in vivo mechanism of                              
                  action of diphosphonates; that is, those of skill in the art expected that                               
                  diphosphonates would act to interfere with, rather than aid, fracture healing.  In                       
                  addition, the state of the prior art was such that those skilled in the art would not                    
                  have considered practice of the claimed method to be feasible.  Finally, the                             
                  specification lacks any working examples or actual data to counter the art-based                         
                  expectation that the claimed method simply would not work.                                               
                         We conclude that the evidence of record provides sufficient basis for                             
                  doubting the assertions in the specification as to the scope of enablement, and to                       
                  shift the burden to Appellants “to provide suitable proofs indicating that the                           
                  specification is indeed enabling.”  In re Wright, 999 F.2d at 1561, 27 USPQ2d at                         
                  1513.                                                                                                    
                                                        Summary                                                            
                         We reverse the rejection of the claims as obvious over the references                             
                  cited by the examiner but enter a new ground of rejection based on non-                                  
                  enablement.                                                                                              

                         This decision contains a new ground of rejection pursuant to 37 CFR                               
                  § 1.196(b)(amended effective Dec. 1, 1997, by final rule  notice, 62 Fed. Reg.                           
                  53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122                           
                  (Oct. 21, 1997)).  37 CFR § 1.196(b) provides that, “A new ground of rejection                           
                  shall not be considered final for purposes of judicial review.”                                          






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