Appeal No. 2001-2379 Page 4
Application No. 08/931,666
not shown, e.g., “that antibody levels in vivo could be achieved which would allow
sufficient uptake of antibody by endocytosis to achieve effective levels for
therapy.” Id. The examiner also cited two references showing monoclonal
antibody therapies and immune system-boosting therapies had not been
effective in treating HIV infection. See id., page 5.
We conclude that the examiner has not carried the initial burden of
showing nonenablement, by providing a reasonable explanation of why the
claimed methods are not enabled. The examiner correctly notes that Appellant
has not shown that the claimed method actually works in vivo. See the
Examiner’s Answer, pages 4-5. Appellant, however, is not required to prove that
the claimed method works. “Section 112 does not require that a specification
convince persons skilled in the art that the assertions therein are correct.” In re
Armbruster, 512 F.2d 676, 678, 185 USPQ 152, 153 (CCPA 1975).
Rather, the burden is on the examiner to set forth a reasonable
explanation as to why he believes that the scope of the claims is not adequately
enabled by the description of the invention provided in the specification. See In
re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The examiner cited two prior art references to support his position that those
skilled in the art would not have expected the claimed methods to provide an
effective treatment for HIV infection. See the Examiner’s Answer, page 5.
We do not agree that the cited references support the examiner’s
conclusion. The examiner cites Fahey as showing that “clinical trials using
monoclonal antibody therapies have not provided any clinical benefit.” Id. The
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