Appeal No. 2006-0148 Page 14
Application No. 09/933,309
The examiner also cites McCormick, as well as Greenstein,8 as evidence that
growth hormone therapy results in side effects that could interfere with the successful
practice of the claimed process. See, e.g., the Examiner’s Answer, pages 7 and 19-20.
We do not agree with the examiner’s reasoning. First, the examiner has not
presented evidence or sound scientific reasoning to show that the hepatic tumors or
reduced testosterone levels reported by McCormick and Greenstein, respectively, would
be expected to have any effect on thymus function. The examiner has conceded that
“the patent laws do not require that any invention must be free of all drawbacks, side
effects and complications.” Examiner’s Answer, page 33. We agree. See, e.g., CFMT,
Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1338, 68 USPQ2d 1940, 1944 (Fed. Cir.
2003) (“Title 35 does not require that a patent disclosure enable one of ordinary skill in
the art to make and use a perfected, commercially viable embodiment absent a claim
limitation to that effect.”); In re Brana, 51 F.3d 1560, 1567, 34 USPQ2d 1436, 1442
(Fed. Cir. 1995) (“‘[O]ne who has taught the public that a compound exhibits some
desirable pharmaceutical property in a standard experimental animal has made a
significant and useful contribution to the art, even though it may eventually appear that
the compound is without value in the treatment of humans.’”).9
The examiner has not provided a reasonable explanation of why the side effects
observed by McCormick and Greenstein would have been expected to affect the
function of the thymus gland. Therefore, the examiner has not adequately explained
why those side effects would be a factor in the enablement of the claimed method.
8 Supra, note 1.
9 Although the Brana court referred to “useful[ness],” the rejection on appeal was for lack of enablement.
See 51 F.3d at 1564, 34 USPQ2d at 1439.
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