Appeal No. 2004-1823 Page 4
Application No. 09/148,012
specification, however, is any statement that altering SR-BI levels may “enhance or
restore fertility or treat a reproductive disorder” in a female mammal. Nor is there any
statement in regard to enhancing or restoring fertility or treating a reproductive disorder
in a female mammal by broadly administering a compound altering lipoprotein, LDL,
HDL or cholesterol levels as required by claim 1 on appeal.
Discussion
We have considered the examiner’s written description and enablement
rejections but find that they are subsumed by a bigger issue involving written
description. Consequently, we make the following new ground of rejection under the
provisions of 37 CFR § 41.50(b) and will subsequently discuss the examiner’s
rejections.
1. New Ground of Rejection Under 37 CFR § 41.50(b).
Claims 1-10, 12, 15, 16, and 20-22 are rejected under 35 U.S.C. § 112, first
paragraph (written description).
In order to put the written description issue we have discovered in perspective we
will trace the evolution of claim 1 from how it read when the case was originally filed to
its present amended form.
Original claim 1 read as follows:
A method for modifying steroid production in a mammal comprising administering
a compound altering the transfer of cholesterol or cholesteryl ester from high density
lipoprotein or other lipoproteins via SR-BI to liver or steroidogenic tissues.
As seen, original claim 1 comported with the written description of this application
in regard to modifying steroid production in a mammal by administering a compound
altering the transfer of cholesterol or cholesteryl ester from high density lipoprotein or
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