Appeal No. 2004-1790 Page 3
Application No. 09/836,971
The rejection specifically addresses three of the Wands factors; 1)
breadth of the claims; 2) state of the art; and 3) guidance of the specification,
and examples. See In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1403
(Fed. Cir. 1988). With respect to breadth of the claims, the rejection asserts that
the recitation of preventing “extend[s] the treatment to those patients in which
rectal and colon cancers may occur at any point of time in [the] future.” See
Examiner’s Answer, page 5. With respect to the state of the art, the examiner
apparently recognizes that “[t]he state of the art recognizes that increased intake
of dietary fibers contribute to the increased bowel movements and thus result in
lowering the risk of colon cancers,” but asserts that “the art does not teach or
recognize a complete prevention of the above claimed cancers.” See id. Finally,
with respect to guidance of the specification and examples, the examiner
focuses on the lack of teaching of an understanding of when the cancer may
occur. The rejection thus contends that the specification provides no examples
of long term trials, and fails to “teach at what time point or the duration of time
that the claimed cancers would take to develop.” Id. Moreover, according to the
rejection, the specification “does not provide any guidance as to how long one
has to administer the instant laxatives so as to prevent the occurrence of colon
or rectum cancer.” Id.
“[A] specification disclosure which contains a teaching of the manner and
process of making and using the invention in terms which correspond in scope to
those used in describing and defining the subject matter sought to be patented
must be taken as in compliance with the enabling requirement of the first
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