Appeal No. 2004-1823 Page 10
Application No. 09/148,012
At that point in time, the examiner will be in a better position to assess the written
description and enablement issues raised in the extant rejections.2
3. Rejection Under 35 U.S.C. § 112, Second Paragraph.
The only reason given by the examiner in support of this rejection is that the
claims are “incomplete for omitting essential steps, such omission amounting to a gap
between the steps. . . . The omitted steps are: the recitation of a treatment regimen
including a dose of the claimed compound to be administered and the length of time to
administer the compound.” Examiner’ Answer, page 8. We reverse this rejection.
Claim 1 does recite a treatment regimen as well as a dose and length of time that
the compound is to be administered in that claim 1 requires administering the specified
compound in an amount effective to enhance or restore fertility or to treat a reproductive
disorder. The dosage and the time period in which the compound is administered are
those which are “effective” as required by claim 1 on appeal. What the examiner does
not appreciate is that claim 1 is functional in nature. Normally that means that claim 1 is
broad in scope, not indefinite under 35 U.S.C. § 112, second paragraph.
The examiner has not identified in what manner a person of skill in the art would
have difficulty in ascertaining the metes and bounds of claim 1 on appeal. Under these
circumstances, we reverse the rejection under 35 U.S.C. § 112, second paragraph.
2 Issues concerning written descriptive support for amended claims would be
minimized if appellant would comply with the requirements of 37 CFR § 1.75(d)(1) when
presenting the amended claims.
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