Appeal No. 1998-0143
Application No. 08/268,177
Here, both claim 1 of the '610 patent and claim 11 on appeal are drawn to a method for
eliciting neural fiber growth within the CNS comprising implanting a polymer encapsulated
neural fiber growth eliciting neuro-active agent within the CNS. More specifically, claim 1
of the '610 patent6 recites three species of the encapsulating polymer generically
described in claim 11 on appeal.
Appellants argue that appealed claim 11 cannot be obvious unless the '610 patent
supports a method using a generically defined polymer to encapsulate the neural fiber
growth eliciting neuro-active agent (Brief, pp. 9-10). However, enablement and
obviousness-type double patenting are two separate issues. Here, appellants chose to
file the present continuation-in-part application to overcome the enablement rejection of
the '610 patent rather than take the enablement issue to the Board in spite of their stated
belief that the examiner's position was in error (Brief, p. 5). Further, appellants have not
refuted the examiner's position that "[t]he characteristics of 'being
permeable..biocompatible...biodegradable, kinetics described the description of the
polymer are all art recognized as inherent to the copolymers and homopolymers used in
6 Claim 1 of the '610 patent reads as follows:
A method for eliciting neural fiber growth within the central nervous system which
comprises implanting within the central nervous system a neuro-active neural fiber growth
eliciting molecule encapsulated within a microsphere comprising the copolymer of
poly(lactide-co-glycolide) or a homopolymer of polylactide or polyglycolide.
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