Appeal No. 2002-0766 Page 5
Application No. 08/793,053
precursor cells. . . . This, in turn, can result in bone resorption, which is the
destructive aspect of many bone diseases. However, the remaining bone
precursor cells apparently attempt to compensate for their lower numbers, and in
doing so have increased levels of ON [osteonectin] and OC [osteocalcin]. It is
this latter characteristic, and not absolute numbers, that is measured according
to the present invention.” Id., pages 5-6. See also pages 12-13:
The examiner argues that, if OC and ON are known to increase
with age, . . . one would expect a comparison of levels in an older
person always to be higher than a younger person. However, the
examiner misses the point that all individuals are different.
Whereas the “normal” OC and ON levels from the control group
might be established by looking at healthy individuals in the 15-40
year-old range, a ten-year old might exhibit higher OC and ON
levels than the control group. This would indicate a bone disease
state, or at least a risk of the disease.
Appellants conclude that “the present invention is a fairly straightforward one.
ON and OC levels generally go up with age. Along with this increase, there is a
concomitant increase in the risk of developing a bone disease. All the present
invention seeks to do is to identify those individuals whose bone precursor cells
show such increases.” Id., page 13.
“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, “[w]hen rejecting a claim under
the enablement requirement of section 112, the PTO bears an initial burden of
setting forth a reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the description of
the invention provided in the specification of the application.” In re Wright,
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