Appeal No. 1997-2510
Application No. 07/868,539
III. New Matter:
To further confuse this record, at page 19 of the Answer, the examiner
argues “the present rejection is not for new matter but that the claims are
rejected because the written description fails to meet the written description
requirement.” However, in the very next two sentences (id.) the examiner states
“[t]he instant claims on appeal are amended claims, not originally filed claims. It
is the written description which is inadequate and which also does not enable the
claims.”
It is unclear, why after affirmatively stating that the rejection is “not for new
matter” the examiner is compelled to point out that the “claims on appeal
are amended claims, not originally filed claims.” Upon further prosecution, the
examiner should clarify this issue.
IV. Toxic Side Effects:
We note the examiner’s reference (Answer, 16) to Gura arguing, “that
there [are] further unsolved problems with using are [sic] oligonucleotides as in
unforeseen difficulties such as toxic side effects including increased blood
pressure and decreased heart rate.”
With regard to examiner’s concern about toxic side effects, it appears that
the examiner is confusing the requirements under the law for obtaining a patent
with the requirements for obtaining government approval to market a particular
drug for human consumption. See Scott v. Finney, 34 F.3d 1058, 1063, 32
USPQ2d 1115, 1120 (Fed. Cir. 1994) (“Testing for the full safety and
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