Appeal No. 2004-1823 Page 9
Application No. 09/148,012
exploring the potential etiology of abnormal lipoprotein structure or
metabolism in these patients, although a few studies have examined the
potential role of lipoproteins in female infertility associated with endocrine
disturbances such as polycystic ovarian syndrome.
Page 1721 (reference citations omitted). As of 2001, appellant is admitting that for the
10-20% of women having infertility problems of unknown cause, it was not known that
altering their lipid level broadly as set forth in claim 1 on appeal would enhance or
restore their fertility. If anything, Miettinen establishes that appellant was not in
possession of the concepts now claimed as of the filing date of this application.
2. Examiner’s Written Description and Enablement Rejections.
In reviewing the examiner’s reasoning in support of these rejections as it appears
in the Examiner’s Answer, we find the examiner was concerned about the compounds
encompassed by the claims on appeal as well as appropriate dosages to be used in the
claimed methods. See, e.g., Examiner’s Answer, page 3. While the examiner makes
valid points in making these rejections, we believe the examiner overlooked the
overriding issue in this case outlined above in the new ground of rejection. We are not
prepared to say that the examiner’s rejections are incorrect, just that the issues raised
by the examiner are premature until appellant can establish that the claims as drafted
enjoy written descriptive support in the original disclosure of this application.
Under these circumstances, it is appropriate that we vacate the examiner’s
enablement and written description rejections. If prosecution is to be continued in this
application, we believe appellant will need to amend the claims so that they are limited
to subject matter that was clearly described in the original disclosure of this application.
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