Appeal No. 2001-1651 Page 5
Application No. 09/238,972
In addition, the examiner failed to consider the level of skill in the art as it
relates to the claimed invention. To the contrary, by incorrectly interpreting the
claimed invention to require the claimed antisense oligonucleotide, or a
pharmaceutical composition thereof, to have the ability to inhibit CAT2 mRNA
translation the examiner created an artificial claim. The examiner then attacks
this artificial claim finding no written descriptive support in the disclosure for an
“antisense oligo that is capable of inhibiting CAT2 RNA thereby disrupting
translation of cationic amino acid transport protein … [or for] pharmaceutical
compositions comprising the antisense oligo since no evidence is provided
demonstrating the ameliorative effects of treatment with said antisense oligo.”
See Answer, page 5. These arguments, however, do not address the invention
of claims 3 and 16.
Accordingly, it is our opinion that the examiner failed to provide the
evidence necessary to establish that one of skill in the art could not determine
from the specification that the inventor possessed the invention of claims 3 and
16 at the time of filing. Accordingly, we reverse the rejection of claims 3 and 16
under 35 U.S.C. § 112, first paragraph.
Enablement:
The initial burden of providing reasons why a supporting disclosure does
not enable the claims rests with the examiner. In re Marzocchi, 439 F.2d 220,
223, 169 USPQ 367, 369 (CCPA 1971). It is the examiner’s burden to establish
that appellant’s specification does not provide a sufficient disclosure, either
through illustrative examples or terminology, for one skilled in the art to practice
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