Appeal No. 2001-2646 Page 8
Application No. 08/463,951
taken as in compliance with the enabling requirement of the first paragraph of
§ 112 unless there is reason to doubt the objective truth of the statements
contained therein which must be relied on for enabling support.” (emphasis in
original)).
The examiner cites Maggi and Rouissi as not providing “evidence that NK-
1 antagonists (which is what applicants’ compounds are) as a class or even
individual compounds have such a range of uses,” as claimed. See the
Examiner’s Answer, pages 7-8. However, the examiner concedes that Maggi
mention[s] a lot of potential uses beginning on p. 60 through 66 for
NK-1 antagonists including psychosis, neurodegenerative diseases
such as Alzheimer’s, convulsions, Crohn’s disease, ocular disease,
and irritable bowel syndrome [and] concludes on p. 67 that NK
antagonists may be useful for certain human diseases.
Examiner’s Answer, page 8.
The examiner cites no evidence contradicting Maggi, and indicating that
NK-1 antagonists such as those disclosed in the instant specification would not
be expected to be effective in treating the recited disorders. Since the examiner
has conceded that Maggi suggests NK-1 antagonists have potential uses in
treating a variety of disorders, the evidence of record appears to favor
Appellants’ position more than the examiner’s.
The examiner may well be correct that Maggi and Rouissi do not show
that NK-1 antagonists have the breadth of uses disclosed in the specification.
But the examiner must do more than point to a lack of evidence supporting the
breadth of the claims. The burden is not on the applicants to show that the
disclosure in the specification is correct; the burden is on the examiner to show
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