Appeal No. 2002-0766 Page 4
Application No. 08/793,053
middle-aged person, indicates that the subject is at risk of developing an age-
related bone disorder.
The examiner rejected the claims as nonenabled, on the basis that the
specification discloses that osteocalcin and osteonectin expression in
preosteoblastic cells normally increases with increasing age; the abnormal
elderly individuals are those with decreased expression of osteocalcin and/or
osteonectin. See the Examiner’s Answer, pages 3-4:
The specification . . . teach[es], on page 17, line 24 to page 18, line
15, that sub-sets of elderly subjects who have, or who are at risk of
developing, a certain type of bone disorder, in particular
osteoporosis, exhibit decreased amounts of osteocalcin or
osteonectin expression on preosteoblastic cells. . . . However, the
claims are drawn to an opposing scenario, in which an increased
amount of osteonectin or osteocalcin expressed by bone precursor
cells relative to the amount of osteocalcin or osteonectin expressed
by bone-precursor cells of a young or middle-aged individual, is
indicative of said subject being at risk for developing an age-related
bone disorder. . . . Further, the specification teaches that age-
related bone disorders are due to either a decreased number of
osteoblasts or decreased osteoblast function and it is not evident
how an increase in osteocalcin or osteonectin cell surface
expression on preosteoblastic cells can be prognostic for an age-
related bone disorder.
Examiner’s Answer, pages 3-4.2
Appellants argue that the claims are enabled. “As people age,
osteoporosis develops in almost all individuals, to a greater or lesser extent.”
Appeal Brief, page 5. “[A]ging does cause a decreasing number of bone
2 The examiner also rejected claim 92 as nonenabled because the claim includes the limitation
that the initial cell population is obtained from peripheral blood, but according to the examiner,
“[t]he specification teaches only bone marrow (page 5, lines 31-34) as a source of a population of
cells that includes bone precursor cells.” Examiner’s Answer, page 4. We reverse this basis of
the rejection, because the specification includes a working example showing isolation of bone
precursor cells from peripheral blood. See pages 73-74.
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