Appeal No. 1999-1245
Application No. 08/245,282
examiner has failed to properly consider the state of the art in considering the
enablement issue. For example, Bonjouklian 1 and 22, contemporaneous with
appellant’s invention, reflect that the art was aware of the ability to inhibit PI 3-kinase
using wortmannin, in vivo. Bonjouklian 1, column 13, lines 42-47; column 15, lines 9-
14. Weisinger describes the administration of wortmannin to rats inhibits paw edema
and shows a strong antiinflammatory effect. Weisinger, pages 135-136.
While the factors relied on by the examiner are relevant in determining whether
the claimed invention is enabled by the specification, we hold that, on balance, they are
insufficient, in view of the state of the art, to establish a reasonable basis to doubt the
objective truth of statements, screening assays and examples provided in the
specification. In view of the above, the rejection of the claims for lack of enablement is
reversed.
35 U.S.C. § 103
Claims 46-48, 50-60, 85 and 86 stand rejected under 35 U.S.C. § 103 as
unpatentable for obviousness over Ward 1993 in view of Vandenberghe and Ward
1992. Claim 49 stands rejected under 35 U.S.C. § 103 as unpatentable for
obviousness over Ward 1993 in view of Vandenberghe, Ward 1992 and Okada.
2 These patents are discussed further in the section of this opinion entitled
“Other Issues” herein.
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