Appeal No. 1999-1280
Application No. 08/379,813
In our opinion, as set forth above, the examiner failed to meet his burden of
establishing a prima facie case of nonenablement. Accordingly, we reverse the
rejection of claims 1-33 under 35 U.S.C. § 112, first paragraph.
THE REJECTION UNDER 35 U.S.C. § 102:
Appellants set forth (Brief, page 3) two claim groupings: Group I, claims 1-5, 7-
16, 18-27, and 29-33, and Group II, claims 6, 17, and 28. Since the claims rejected
under 35 U.S.C. § 102 (claims 1, 2, 7-13, 18-24, and 29-33) all fall within Group I, we
limit our discussion to representative independent claim 1. Claims 2, 7-13, 18-24, and
29-33 will stand or fall together with claim 1. In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991).
According to the examiner (Answer, page 4) Antoniades teaches:
BMP and osteogenin for treating periodontal defects which
promotes growth of bone, periodontium or ligament. … [T]he carrier
may be natural and synthetic polymers such as collagen, bone
substituting agents and inert gels or liquids such as methyl
cellulose. … [T]he composition prompts increased bone,
connective tissue and cementum formation when applied to
periodontal disease affected sites.
Regarding the claim limitations drawn to types of periodontal
defects such as vertical, horizontal, furcation, and interproximal,
Antoniades teaches periodontal disease defects in general and that
teaching would include these well known defects.
All the features of the claims are shown by Antoniades for
the same function as presently claimed.
In response, appellants argue (Brief, page 4) that “the examiner has effectively
read out of the claims the recitation that the claimed method ‘consists essentially of’
administering to the site … a composition comprising an effective amount of a bone
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