Appeal No. 2006-0275 Page 8
Application No. 09/964,667
those of skill in the art would not have considered the general problems cited by
the examiner to be a source of undue experimentation in this particular field.
Moreover, it is well settled that a therapeutic method need not be ready for broad
clinical application in order to be enabled. See In re Brana, 51 F.3d 1560, 1567,
34 USPQ2d 1436, 1442 (Fed. Cir. 1995): “Usefulness in patent law, and in
particular in the context of pharmaceutical inventions, necessarily includes the
expectation of further research and development.”5
That being said, however, we agree with the examiner that the mere
observation that AD7c-NTP is expressed at some level in neuroectodermal
tumors, malignant astrocytomas, and glioblastomas (Specification, page 25)
does not establish a correlation between inhibiting AD7c-NTP and treating
neuroectodermal tumors, malignant astrocytomas or glioblastomas (Answer,
page 5). That is, we do not agree with appellants’ assertion that “the scope of
the claims on appeal is commensurate with the teachings of the specification”
(Reply Brief, page 1).
According to the specification, AD7c-NTP is produced in neurons in
normal brain tissue (Specification, page 18). In addition, “AD7c-NTP is produced
by neuroectodermal tumor cells, malignant astrocytoma cells, glioblastoma cells,
and in relatively high concentrations (i.e., relative to controls) in brain tissue of
[Alzheimer’s disease] patients” (id., page 25). The specification teaches that
neural cells that over-express AD7c-NTP develop morphological features
5 The Brana court wrote in terms of “usefulness,” but the rejection on appeal was based
on 35 U.S.C. § 112, first paragraph. See 51 F.3d at 1564, 34 USPQ2d at 1439.
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