Appeal No. 2003-0865 Page 6
Application No. 09/300,789
2. Enablement
The examiner rejected claim 23 as nonenabled. Claim 23, unlike the other
claims on appeal, is not limited to administration of a nonsteroidal anti-
inflammatory agent and/or a histamine H2 receptor blocking agent. Claim 23
encompasses administration of any “agent that inhibits excitotoxic neuronal cell
death.” The examiner’s rejection reads as follows:
Claim 23 is rejected under 35 U.S.C. 112, first paragraph, because
the specification, while being enabling for non-steroidal anti-
inflammatory agents and histamine H2 receptor blocking agents,
does not reasonably provide enablement for any agents that can
inhibit excitotoxic neuronal cell death. The specification does not
enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to use the invention
commensurate in scope with these claims [sic]. On page 4, line 26
bridging page 5, line 3, applicants disclose nonsteroidal anti-
inflammatory agents and histamine H2 receptor blocking agents.
No other agents are disclosed.
Paper No. 9, page 4.
Appellants argue that “the Examiner has provided no evidence or
reasoning inconsistent with the disclosure to support her view.” Appeal Brief,
page 7.
Again, we agree with Appellants. The examiner bears the burden of
showing that practicing the full scope of the claimed invention would have
required undue experimentation. See In re Wright, 999 F.2d 1557, 1561-62, 27
USPQ2d 1510, 1513 (Fed. Cir. 1993). “[It] is incumbent upon the Patent Office,
whenever a rejection on this basis is made, to explain why it doubts the truth or
accuracy of any statement in a supporting disclosure and to back up assertions
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