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.” 11Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007