Appeal No. 2003-2139 Page 9
Application No. 09/812,945
As set forth in Texas Instruments, “[a] ‘whereby’ clause that merely states
the result of the limitations in the claim adds nothing to the patentability or
substance of the claim.” In contrast, the clause in claim 1 requires the additional
treatment of one or more disorders mediated by histone deacetylase. Claim 1
requires an effective amount of a compound of formula 1 to (1) inhibit histone
deacetylase in cells and (2) treat one or more disorders mediated by histone
deacetylase. Stated differently, we consider the clause “thereby treating one or
more disorders mediated by histone deacetylase” to add to the patentability and
substance of the claim.
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
According to the examiner (Answer, page 3), “while being enabling for
some types of cancer, [appellants’ specification] does not reasonably provide
enablement for ‘treating cancer’ in general.” While the examiner offers no
evidence in support of his position, the examiner finds (id.) “[g]iven the current
state of the art, the treatment of all cancers broadly is unpredictable. One of
ordinary skill in the art would not believe that one compound could treat all types
of cancer…” According to appellants (Brief, page 3), “[t]he error in this rejection
stems from an erroneous interpretation of the clause ‘thereby treating one or
more disorders’ of independent claim 1.” For the foregoing reasons we are not
persuaded by this argument.
However, having found that the clause “thereby treating one or more
disorders mediated by histone deacetylase” is a positive limitation on appellants’
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