Appeal No. 2005-2235 Page 7
Application No. 09/038,894
saline-treated controls while Futhan-treated rats recovered after a brief
hypotension….” Focusing on the brief hypotension experienced by the Futhan-
treated rats, the examiner asserts (Answer, page 8) that hypotension “is a
disease or disorder which was not prevented.” The examiner apparently missed
the point of the experiment. As appellants point out (Brief, page 23), “[i]n animals
pretreated with serine protease prior to performance of the SAO procedure,
shock and mortality is completely prevented.” The examiner’s focus on
hypotension would be relevant only if it placed the rats in shock. Appellants
address this issue head on, asserting that “[t]he transient decrease in blood
pressure or brief hypotension that was reported in animals pretreated with serine
protease … is not tantamount to shock.” Brief, page 23. The examiner does not
dispute this assertion. Accordingly, we find that the weight of the evidence falls
in favor of appellants.
There is no doubt that the scope of appellants’ claimed invention is very
broad. Appellants, however, have provided an enabling description (example 8)
of the “prevention” of a disease – shock. The examiner does not dispute that the
methodology set forth in example 8 is within the scope of appellants’ claimed
methods. In all, beyond conjecture, the examiner offers no evidence to support a
finding of non-enablement. In this regard, we remind the examiner, “[w]hen
rejecting a claim under the enablement requirement of section 112, the PTO
bears an initial burden of setting forth a reasonable explanation as to why it
believes that the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the specification of the
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