Appeal No. 2001-2497 Page 7
Application No. 08/855,744
the claims as they presently stand encompass only two therapeutic agents (TNF
and IL-1) in combination with a single remover substance (liposomes). In short,
the examiner has not carried the initial burden of showing a prima facie case of
nonenablement. The rejection under 35 U.S.C. § 112, first paragraph, is
reversed.
2. Obviousness
The examiner also rejected the claims as obvious over the prior art. The
statement of the rejection in the Examiner’s Answer reads as follows: “Claims 1
and 3 stand rejected . . . under 35 USC 103 over Goodwin in view of Huston et
al, and Colcher et al. This rejection is set forth in prior Office action, Paper No. 5;
please also see the Office action in paper No. 10.” Examiner’s Answer, page 3.
This statement of rejection leaves us somewhat at a loss, since neither of
Paper No. 5 or Paper No. 10 contains a rejection based on Goodwin, Huston,
and Colcher. The § 103 rejection in Paper No. 5 is based on “Goodwin (1987) in
view of Huston et al.,” while Paper No. 10 contains two rejections under § 103,
one being the Goodwin-and-Huston rejection from Paper No. 5, and the other
based on “Goodwin (1987) in view of Huston et al . . . or Colcher et al (1990) and
further in view of Glennie . . . and Chang et al.” We also note that in the next
Office action, the latter rejection morphed one based on “Goodwin (1987) in view
of Huston et al . . . or Colcher et al (1990) essentially for the reasons of record.”
See Paper No. 16, mailed June 17, 1993.
Thus, other than the Examiner’s Answer, the record nowhere contains a
rejection under § 103 based on Goodwin, Huston, and Colcher. Thus, the
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