Appeal No. 2005-2235 Page 6
Application No. 09/038,894
Enablement:
Claims 32-36, 38, 41 and 42
Claims 32-36, 38, 41 and 42 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based on an insufficient disclosure to support or enable the
claimed invention.
According to the examiner (Answer, page 4), the phrase “thereby
preventing a disease” has no support in appellants’ disclosure. In this regard, the
examiner finds (id.), “[t]he specification does not give any evidence to support
that … [a] disease is prevented.” In response, appellants explain (Brief, page
21), “[e]xample 8 of the specification (pages 136-145) provides results of
experiments employing Splanchnic Arterial Occlusion (SAO) shock models
effected either by arterial clamping or by bolus injection of pancreatic
homogenate.” As appellants explain (Brief, page 22), SAO “in rats is a well
studied model of hypotension/ischemia-reperfusion injury….” In this regard,
appellants assert (Brief, page 23), in accordance with their claimed invention,
“animals pretreated with serine protease [(Futan)] prior to performance of the
SAO procedure, shock and mortality is completely prevented….”
In response, the examiner asserts (Answer, page 7) that the evidence set
forth in example 8 does “not prove much.” According to the examiner (id.), “the
rats could have died from the bout of hypotension that the [F]uthan and the
pancreatic homogenate put the rat[s] through.” We are not persuaded by the
examiner’s assertion. To the contrary, appellants’ specification states (page
137), “[i]njection of whole pancreatic homogenate proved immediately fatal to
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