Appeal No. 2001-1905 Page 7
Application No. 08/245,827
oxidizing agent at the in vivo site of the NMDA receptor….” The examiner
provides no evidence to dispute this fact, and we find the examiner’s argument
(Answer, page 12) that the claims do not recite the term “equilibrium” lacks merit.
On reflection, we are not persuaded by the examiner’s conclusions.
Based on the foregoing discussion, we find that the examiner failed to meet his
burden of establishing a prima facie case of non-enablement. Accordingly, we
reverse the rejection of claim 11 and 13-15 under 35 U.S.C. § 112, first
paragraph.
Having determined that the examiner has not established a prima facie
case of obviousness, we find it unnecessary to discuss the Declaration evidence
relied on by appellants to rebut any such prima facie case. Furthermore, we
recommend the examiner review Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d
1362, 1371, 52 USPQ2d 1129,1136 (Fed. Cir. 1999), wherein our appellate
reviewing court provided a model analysis of enablement issues and illustrated
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