Appeal No. 2001-2646 Page 7
Application No. 08/463,951
1657 (Bd. Pat. App. Int. 1988) and Ex parte Powers, 220 USPQ 924 (Bd. Pat.
App. Int. 1982), as providing “the standard of testing needed to show in vivo
efficacy.” Examiner’s Answer, page 8. The examiner apparently concluded that
in vivo efficacy for the claimed methods must be shown, because “[o]therwise,
the huge lists of disorders urged in the specification (claims such as 61 are
virtually nonlimiting) [are] simply an invitation to experiment which is not in
compliance with 35 USC 112, par.one.” Id.
Here again, we conclude that this basis of the rejection fails to carry the
examiner’s initial burden of showing nonenablement. First, the examiner has
provided no explanation of why the recitation of “preventing” a disorder causes
the claims to become nonenabled. The examiner has indicated that the claimed
methods “would not be rejected if limited to ‘treating’” pain, asthma and
inflammation. Examiner’s Answer, page 8. Logically, if the recited compounds
are useful for treating conditions such as pain and inflammation once they exist,
they would also be expected to be effective in preventing pain or inflammation, if
they were administered before the onset of pain or inflammation. The examiner
has provided no reasoning to support a contrary conclusion.
In addition, the examiner has not provided sufficient evidence to support
her position that the claimed methods of treatment are not enabled. See In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971) (“[A]
specification disclosure which contains a teaching of the manner and process of
making and using the invention in terms which correspond in scope to those
used in describing and defining the subject matter sought to be patented must be
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