Appeal No. 2003-0865 Page 7
Application No. 09/300,789
of its own with acceptable evidence or reasoning which is inconsistent with the
contested statement. Otherwise, there would be no need for the applicant to go
to the trouble and expense of supporting his presumptively accurate disclosure.”
In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971).
Here, the examiner has provided no evidence or scientific reasoning to
show that undue experimentation would have been required in order to practice
the claimed method using agents other than nonsteroidal anti-inflammatory
agents and histamine H2 receptor blocking agents. The examiner cannot satisfy
her burden of showing nonenablement simply by pointing out that no other
specific agents are disclosed in the specification.
The guidance provided in the specification is only the starting point for the
enablement analysis. “[A] patent need not teach, and preferably omits, what is
well known in the art.” Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d
1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1987). Thus, a proper analysis of
enablement in this case must take into account other agents known in the art that
inhibit excitotoxic neuronal cell death. Other potentially relevant considerations
are set out in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988).
The examiner has provided no evidence that agents, other than
nonsteroidal anti-inflammatory agents and histamine H2 blockers, having the
recited property could not have been identified through routine experimentation.
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