Appeal No. 2002-0766 Page 6
Application No. 08/793,053
999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
In this case, we agree with Appellants that the examiner has not provided
an adequate basis for doubting the enablement of the claimed method. The
specification teaches that the risk of developing an age-related bone disorder
generally increases as people get older. It also teaches that osteocalcin and
osteonectin expression by bone precursor cells generally increases as people
get older. These disclosures seem to support the operability of the claimed
method; specifically, that increased osteocalcin and osteonectin expression
correlates with increased risk of an age-related bone disorder.
The examiner’s analysis seems to focus on the group of elderly individuals
in the specification who have unusually low levels of osteocalcin and osteonectin.
However, low levels of osteocalcin and osteonectin in elderly subjects are
disclosed to be “indicative of an elderly subject having a particular type of
osteoporosis, osteopenia or other disorder associated with age-related changes
in bone formation.” Specification, page 18 (emphasis added). Thus, these
findings do not conflict with the claimed method of identifying a subject at risk of
developing an age-related bone disorder, based on increased osteonectin or
osteocalcin expression.
The examiner’s concern may be that practicing the claimed method on an
elderly patient is not likely to provide more information than simply asking the
person how old they are. Being elderly, the patient is likely to be at increased
risk of an age-related bone disorder, whether the degree of risk is assessed
based on age or on osteocalcin/osteonectin expression levels. This may be true,
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