Appeal No. 2003-2139 Page 9
Application No. 09/812,945
claimed invention, we find that the cancer to be treated must be one that is
mediated by histone deacetylase. Therefore, contrary to the examiner’s position,
the claimed invention is not drawn to the treatment of all types of cancer, instead
the claimed invention is drawn to the treatment of cancer mediated by histone
deacetylase. Since the examiner has not presented any evidence or argument
as to why the specification does not provide an enabling description of the
treatment of cancer mediated by histone deacetylase we are compelled to
reverse the rejection of claims 1, 2, 4-7, 10, 12, 17, 18, 40-46 under 35 U.S.C.
§ 112, first paragraph.
THE REJECTION UNDER 35 U.S.C. § 103:
According to the examiner (Answer, page 4), Richon “teaches that
hydroxamic acid derivatives, a class of hybrid bipolar compounds (HPCs) induce
terminal differentiation and[/]or apoptosis in various transformed cells… [and
Marks] teaches that hydroxamic acid-based HPCs are potentially effective
agents for cancer therapy….” While noting (id.) that neither Richon nor Marks
“explicitly teach the elected compound in their method of treating cancer,” the
examiner finds “[i]t would have been obvious … to employ the elected compound
in a method of treating cancer … because the elected compound is a
hydroxamic acid derivative.” The basis for the examiner’s rejection is perhaps
more succinctly stated on page 7 of the Answer, Marks “provides a guide in
choosing hydroxamic acid derivatives that would exhibit … therapeutic activities.”
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