Appeal No. 2005-0838
Application No. 10/174,414
disorders; i.e., disrupting the mechanisms which give rise to said
conditions and disorders. The references relied upon by the examiner disclose that the
causes of several of said conditions and disorders are unknown or are due to defective
genes. Thus, prevention involves more than the administration of compositions
comprising the compounds of formula (I) to a tissue which has become inflamed due to
the infiltration of leukocytes; prevention involves a method wherein said compositions
are administered to a particular subject (one who will eventually be afflicted with the
claimed inflammatory conditions and immune disorders) in a manner which prevents the
inflammation of tissues in the first instance.
The appellants have not addressed the teachings of the examiner’s references,
but instead have focused on the level of skill in the art. According to the appellants,
said persons need only to follow the instructions set forth in the specification to make
and use the invention. Brief, p. 7. The appellants argue that “if the instructions can be
followed and the equipment nevertheless fails to operate as expected, the problem is
not enablement, it is the utility of the equipment.” Brief, p. 6. We disagree.
We point out that for purposes of enablement, the specification must provide
reasonable detail in order for those skilled in the art to carry out the invention. In this
case the specification must disclose a means of preventing any inflammatory condition
and immune disorder associated with the infiltration of leukocytes into inflamed tissue,
regardless of the underlying causes of said conditions and disorders. For the reasons
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