Appeal No. 2000-1919
Application No. 08/831,993
Answer, page 6 (emphasis in original). We have reviewed the cited references,
however, and we do not find that they provide evidence to support the examiner’s
conclusion. Gwadz states that “[i]n vitro studies . . . showed that the magainin
peptide could disrupt extracellular stages of [plasmodial] parasites but that it had
no effect on intracellular development.” Page 2628, right-hand column.
However, Gwadz provides no evidence to support this conclusion, citing only
“unpublished data.” Id.
The Matsuzaki references cited by the examiner also do not support his
position. Matsuzaki investigated the molecular basis of the effect of magainins
on different membranes and the translocation of magainin peptides from one side
of a membrane to the other. The examiner has not adequately explained how
either Matsuzaki reference contradicts the data in the instant specification or
shows that magainins do not penetrate inside cells.
Appellant’s position, on the other hand, is supported by the working
examples in the specification. The examiner has complained that the
presentation of the data in the specification makes it difficult for him to
independently evaluate whether they support the specification’s conclusions.
However, “a specification disclosure which contains a teaching of the manner
and process of making and using the invention in terms which correspond in
scope to those used in describing and defining the subject matter sought to be
patented must be taken as in compliance with the enabling requirement of the
first paragraph of § 112 unless there is reason to doubt the objective truth of the
statements contained therein which must be relied on for enabling support.”
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