Appeal No. 2005-0838
Application No. 10/174,414
We have carefully considered the respective positions of both the appellants and
the examiner and find ourselves in substantial agreement with that of the examiner.
Accordingly, we affirm both Rejection I and II.
Background and Discussion
The present invention is directed to a method of using substituted phenylated
purines as prophylactics for any inflammatory condition or immune disorder associated
with the infiltration of leukocytes into inflamed tissue. Specification, p. 4, lines 24-31.
Since both rejections turn on the same issue; i.e., whether the teachings of the
specification would have enabled one skilled in the art “to make and use” the claimed
method of prophylaxis, we have considered them together.
In brief, the examiner argues that given the breadth of the claims, the
unpredictable nature of the invention, the lack of any working examples, the level of skill
in the art, and the state of the art, the teachings of the specification would not have
enabled one skilled in the art to make and use the invention without undue
experimentation. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir.
1988). The examiner relies on twelve (12) references which disclose that there are no
known methods of preventing several of the claimed diseases and disorders using
pharmaceutical compounds, for support. Attention is directed to pages 4-8 of the
examiner’s Answer for a succinct summary of the teachings of the applied prior art.
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