Appeal No. 2002-1562
Application No. 09/183,454
to make and use other potential embodiments across the full scope of the claim. See,
e.g., In re Goodman, 11 F.3d 1046, 1050-52, 29 USPQ2d 2010, 2013-15 (Fed. Cir.
1993). The pending claims would appear to encompass the treatment of pathogens
including viruses, fungi, bacteria or prions.
If the examiner should determine that the specification does not enable the entire
scope of the pending claims, we recommend that the examiner provide evidence of lack
of enablement to support any such rejection. Any further communication from the
examiner which contains a rejection of the claims should provide appellants with a full
and fair opportunity to respond.
2. We also direct the examiner's attention to copending application 09/938,884,
entitled “Extracorporal System for Treating Disease with Radionucleotides “. We
recommend that the examiner review the disclosure and claims of copending
application 09/938,884 to determine if there may be obviousness-type double patenting
issues present related to the claims of the present application.
CONCLUSION
The rejection of claims 25-30, 32-38 and 42-44 under 35 U.S.C. § 103(a) for
obviousness over Osther in view of Li and Lewis is reversed. Prior to further
prosecution, it is recommended that the examiner consider the issue of enablement of
the claims under 35 U.S.C. § 112, first paragraph to ensure that the specification
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