Appeal No. 2003-0835 Page 9
Application No. 09/419,371
which possess the properties claimed, an assay for determining
such levels and a mammalian testing paradigm for the assessment
of such effects on long term memory.
Paper No. 6, pages 8-9.
The rejection also cites Smith5 to support the proposition that “several
aspects of long-term memory (LTM) as a complex phenomenon wherein the
underlying neurochemical/biochemical/genetic substrates are not understood, in
particular when compared across species.” Id. at 9. In addition, according to the
rejection, Smith discloses that “experimental studies, paradigms and designs for
assessing and ‘measuring’ LTM varies widely across species; applicants’
specification fails to provide support for experimental model used to assess LTM
in Drosophila as valid for assessing LTM in any mammal.” Id.
“[T]he PTO bears an initial burden of setting forth a reasonable
explanation as to why it believes that the scope of protection provided by that
claim is not adequately enabled by the description of the invention provided in
the specification of the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the scope of
enablement.” In re Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513
(Fed. Cir. 1993). See also In re Armbruster, 512 F.2d 676, 678, 185 USPQ 152,
153 (CCPA 1975) (“Section 112 does not require that a specification convince
persons skilled in the art that the assertions therein are correct.”).
5 Smith, Elements of Molecular Biology, Second Edition, John Wiley & Sons Ltd., pp. 419-443
(1996).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007