Appeal No. 2005-2235 Page 10
Application No. 09/038,894
identified it as such in the instant application, then the particulars
for practicing each step in the method, from testing the levels of cell
activation to methods for lowering levels, are known to those of skill
in the art.
In response, the examiner makes no attempt to favor this record with
evidence to rebut appellants’ arguments. Instead, the examiner simply reasserts
that the phrase “administering activation lowering therapy” is broad, and the
phrase “preventing a disease or disorder” is indefinite. Answer, page 10. Both of
these issues were discussed above. Further, we note that simply asserting that
a claim term or phrase is broad, is not a sufficient basis to maintain a rejection
under the enablement provision of 35 U.S.C. § 112, first paragraph.
Accordingly, we find the weight of the evidence favors appellants. The
rejection of claims 10-18, 32-36, 38, 41 and 42 under 35 U.S.C. § 112, first
paragraph is reversed.
OTHER ISSUES
In the event of further prosecution, we encourage the examiner to take a
step back and reconsider the scope of the claimed invention together with any
available prior art. There can be no doubt that appellants’ claimed invention is
broad. See e.g., the foregoing discussion and the examiner’s assertions
regarding the rejections under 35 U.S.C. § 112, first and second paragraphs.
Focusing again on claim 32, as we understand it, claim 32 reads on any method
whereby cell activation is assessed, and action (including bed rest) is taken. In
this regard, we find no requirement in appellants’ claims or specification, that a
blood test or other “procedure” be used to assess cell activation. Accordingly,
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