Appeal No. 2001-1651 Page 11
Application No. 09/238,972
Furthermore, to the extent that Rojanasakul may be relevant to the issue
of patentability, we note that Rojanasakul (page 118, carry over paragraph,
columns 1 and 2), report that thrombocytopenia and renal failure were induced
by an antisense oligonucleotide targeted against the rel A transcription factor.
While, Rojanasakul suggest (id.) that oligonucleotides can have non-specific
actions and may cause toxic side effects in vivo, the examiner supplies no
evidence to demonstrate that a person of ordinary skill in the art would
reasonably expect the claimed antisense oligonucleotides to exhibit similar non-
specific actions. In our opinion, the examiner failed to provide the evidence
necessary to establish that appellant’s specification does not support appellant’s
claimed invention.
As set forth in In re Armbruster, 512 F.2d 676, 677-78, 185 USPQ 152,
153 (CCPA 1975), quoting In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367,
369-70 (CCPA 1971):
[I]t is incumbent upon the Patent Office, whenever a rejection on
this basis [lack of enablement] is made, to explain why it doubts the
truth or accuracy of any statement in a supporting disclosure and to
back up assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested statement.
For the foregoing reasons, it is our opinion that the examiner failed to provide the
evidence necessary to support his position that appellant’s disclosure does not
support the full scope of the claimed invention. Accordingly, we reverse the
rejection of claims 1-9 and 16 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.
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