Appeal No. 2004-1790 Page 5
Application No. 09/836,971
agree that the rat model employed in the specification is different from the
human model” that “proves [the] examiner’s position that prevention is related to
factors such as the length of time the tumor takes to manifest, type of animal
being studied, etc.” Examiner’s Answer, page 8. But as we noted above,
absolute predictability is not required. In addition, appellants’ admission is
merely that “a rat model is a far shorter model which is fully described in the . . .
Specification such that one of ordinary skill in the art could readily practice the
subject matter in Claim 12 without undue experimentation.” Appeal Brief, page
8.
Thus, we find that the examiner has not met the burden of demonstrating
that the claim 12, drawn to “[a] method of preventing colon or rectum cancer,” is
not enabled, and the rejection is reversed.
2. Rejection under 35 U.S.C. § 102(b)
Claims 6, 8, 12 and 14 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Crowson. According to the rejection:
Crowson [ ] teaches several cytocidal agents and bowel
preparation agents that are capable of killing HT 29 colorectal
cancer cell line and thus protection against colorectal cancer. The
bowel preparation agents include polyethylene glycol (PEG).
Although Crowson observes less activity or efficacy with PEG as
compared to cetrimide, the instant claims do not recite the amount
of activity. Further, PEG exhibits as high as 30 and 36 percent
cytocidal activity, which is very significant (table IV). Accordingly,
the teachings meet the claim requirement. Although Crowson fails
to mention non-fermenting osmotic laxative, the property is inherent
to PEG of Crowson.
Examiner’s Answer, page 6.
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