Appeal No. 1997-2510
Application No. 07/868,539
The examiner’s statement of the rejection in the Answer refers to both
“written description” and “enablement”. The statement of this rejection in the
examiner’s June 15, 1995 Office Action (page 2) also referred to “written
description” and “enablement”. However, in developing this rejection in the June
15, 1995 Office Action, the examiner states “[t]he mention at page 14, lines 1-5
of various routes of administration is insufficient written description, enablement,
and best mode to show efficacy” [emphasis added]. Furthermore, in responding
to appellant’s argument (Brief, pages 23-24) regarding the best mode issue, the
examiner argues (Answer, page 24), “the present rejection is not predicated
upon best mode. The comments are, thus, not persuasive nor is there any cure
for the common cold, a viral based disease” [emphasis added].
It appears from these statements that the examiner is concerned about
the utility of the claimed invention. However, absent these spurious comments
by the examiner, this record fails to develop this issue. It is unclear to this Merits
Panel, why the examiner would be compelled to address “efficacy” or comment
on a “cure for the common cold” if the utility of the claimed invention is not at
issue. Upon further prosecution, the examiner should clarify this issue.
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