Appeal No. 2001-0982 Page 5
Application No. 08/310,950
Accordingly, we reverse the rejection of claims 1-23 under 35 U.S.C.
§ 112, first paragraph, as being based on an insufficient disclosure to support or
enable the scope of the claimed invention.
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
According to the examiner (Paper No. 17, page 2), the claims “are
indefinite as to the medical disorder to be treated. The claims are not limited to
the elected species which [sic] was examined, i.e., hormone replacement
therapy.”
However, as appellants point out (Reply Brief, page 22), “such limitation is
premature, since the [e]xaminer would be compelled to continue examination of
the full scope of the claims once the § 103 rejection is withdrawn.” We agree.
See MPEP § 803.02. Accordingly, we reverse the rejection of claims 1-23 under
35 U.S.C. § 112, second paragraph as indefinite since they are not limited to the
elected species.
THE REJECTION UNDER 35 U.S.C. § 103:
According to the examiner (Answer, page 4), Adams “teach the beneficial
effects of hormone replacement therapy in the treatment of atherosclerosis” and
Braun “teach Prostacyclin is benificail [sic] in the treatment of atherosclerosis.”
Based on this evidence and with reference to In re Kerkhoven, 626 F.2d 846,
850, 205 USPQ 1069, 1072 (CCPA 1980), the examiner concludes “it would
have been prima facie obvious under 35 U.S.C. [§] 103 to administer a
composition of iloprost/progesterone/estrdiol jointly as a method of HRT
2 For administrative convenience we refer to the pages of the Reply Brief as if they were
numbered consecutively from the first page through the last page (page 4).
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