Appeal No. 2005-0410
Application No. 09/902,461
(Fed. Cir. 1994). Here, we do not find that Fuller’s statement that it “believes” that
human acid "-glucosidase produced in CHO cells “will be a useful candidate for
replacement therapy in GSD II patients,” provides such disclosure. A “belief” or hope
that something will work is not an affirmative (i.e., an express) teaching of the claimed
method of treating a GSD-II patient by administering the enzyme “periodically at
administrative intervals.” Nor does a “belief” that the enzyme will be a useful candidate
for replacement therapy provide an inherent disclosure of said method. We point out
that no successful enzyme replacement therapies were known in the art at the time of
the invention. See, the Brief, p. 7. A “belief” that a compound might be of therapeutic
value is merely a statement of a possibility which would not manifestly have enabled a
person skilled in the art to “make and use” the claimed invention. As discussed above,
inherency cannot be established by probability or possibility. In re Oelrich, 666 F.2d at
581, 212 USPQ at 326. Moreover, we find the examiner’s arguments that Fuller
anticipates the claimed method to be inconsistent with his statements with respect to
Rejection III. That is, we find that in Rejection III, the examiner states that Fuller does
not teach the amounts of human acid "-glucosidase to employ, the method of
administration of the enzyme or the intervals at which the enzyme should be
administered. See, the Answer, p. 5, lines 3-6. Having reached such a conclusion, it is
not clear to us why the examiner did not re-evaluate his position and withdrawn the
§ 102 rejection.
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