Appeal No. 1999-0326
Application No. 07/997,715
Second, in the statement of the rejection, the examiner argues that the specification
provides “[n]o other guidance . . . as to how any other means of inhibiting IGF-I expression
would have been accomplished.” Second Supplemental Examiner’s Answer, page 2.
While it is true that the specification indicates that “a preferred method of reducing [IGF-I]
expression is by antisense technology,” it also indicates that “[o]ther methods . . . can be
used, including use of specific antibodies.” Specification, page 8. The examiner, in
responding to appellants’ arguments, acknowledges that the specification suggests
several additional methods of inhibiting IGF-I expression, but merely dismisses them as
“entirely prophetic in nature” and “necessitat[ing] that the artisan exercise undue
experimentation.” As stated in In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 369-
70 (CCPA 1971) (citations omitted):
[I]t is incumbent upon the Patent Office, whenever a rejection on this basis is
made, to explain why it doubts the truth or accuracy of any statement in a
supporting disclosure and to back up assertions of its own with acceptable
evidence or reasoning which is inconsistent with the contested statement.
Otherwise, there would be no need for the applicant to go to the trouble and
expense of supporting his presumptively accurate disclosure.
In our view, the examiner has failed to explain why those of ordinary skill in the art
would have been unable to reduce IGF-I expression using specific antibodies, as
described in the specification. In addition, we note that several of the reasons given by the
examiner in support of his conclusion are not relevant to the claimed method, which merely
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