Appeal No. 2001-1925 Page 3
Application No. 08/677,838
Four examples are presented. Examples 1, 2 and 4 are drawn to
application of the solution to wrinkles, and Example 3 is drawn to the application
of the solution to an age spot. Examples 2 and 4 have accompanying pictures,
which, according to the specification, demonstrates the reduction in wrinkles.
See id. at 16-20. In addition, the specification states in Example 1 that use of
the nuclease solution “resulted in the reduction of the subject’s wrinkles,” id. at
18, and in Example 3, states that “the method results in the reduction of
discoloration spots on humans,” id. at 19.
DISCUSSION
Claim 1 stands rejected under 35 U.S.C. § 112, first paragraph, on the
grounds that the specification fails to adequately teach how to make and/or use
the claimed invention, i.e., fails to provide an enabling disclosure.
The rejection focuses on the portions of the specification that explain the
purported mechanism of how the nuclease solution may reduce the appearance
of wrinkles and age spots. See Examiner’s Answer, pages 3-7. However, “it is
axiomatic that an inventor need not comprehend the scientific principles on
which the practical effectiveness of his invention rests.” Fromson v. Advance
Offset Plate, Inc., 720 F.2d 1565, 1570, 219 USPQ 1137, 1140 (Fed. Cir. 1983);
see also In re Storrs, 245 F.2d 474, 478, 114 USPQ 293, 297 (CCPA 1957) (“It
is well established that an applicant for patent need not understand the theory of
operation of [his] invention.”)
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