Appeal No. 2005-1516
Application No. 09/182,645
Paper No. 29, Non-final Rejection, page 2.
We note, however, that given the election of species, we need only consider the
claims to the extent that they are directed to lignin glycoside. Thus, the examiner’s
rejection of the claims for lack of enablement for other PARG inhibitors is not ripe for
consideration. Accordingly, we take no position with respect to whether the
specification would have enabled one skilled in the art to “make and use” PARG
inhibitors in general. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (Bd. Pat. App. & Int.
1987).
In view of the foregoing, we reverse the rejection for lack of enablement
Anticipation
Claims 46-49 stand rejected under 35 U.S.C. §102(b) over Wang orNing.
According to the examiner,
Wang teaches [a] method of treating diabetes comprising administering
ginseng in the form of tea to the patient. ... A tea bag containing 1.8 gram
of ginsen[g] powders and extract. See page 3, the application example of
the English Translation. Ning teaches [a] method of treatment of ischemia
comprising administering ginseng in the form of tea to a patient. See the
abstract. A tea bag weigh[ing] about 15 g, which contains about 1% of
ginseng extract. See, page 2, the last paragraph bridging to page 3, the
third paragraph of the English translation. The ginseng is administered in
the form of tea. See both abstracts. Tanuma teach that ginseng hot water
extract contain[s] the lignin glycoside herein. ... Therefore, the claimed
method herein read[s] on the method of Wang and Ning.
Non-final, page 4. Appearing to rely on principles of inherency, though not specifically
stated, we understand the examiner to argue that Tanuma 1 and 2 teach that the
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