Appeal No. 2006-0730 Page 5
Application No. 10/164,863
requires only a disclosure that conveys with reasonable clarity to those skilled in
the art that the inventor was in possession of the invention. See id.
In this case, the examiner has not adequately explained why the
description provided by the specification would not be considered sufficient by
those skilled in the art. We therefore reverse the rejection based on the written
description provision of 35 U.S.C. § 112, first paragraph.
Enablement:
According to the examiner (Answer, page 3), appellants’ specification
provides an enabling disclosure of “altering fertility in female mice by knocking
out the SR-BI gene. . . .” The examiner finds, however, appellants’ specification
fails to enable “any method of treating infertility or treating any and all
reproductive disorders by altering lipoprotein, LDL, or HDL transfer, or
cholesterol levels in a mammal.” Id. According to the examiner (id.), appellants
“provided no guidance and working examples of any compounds which act via
SR-BI to alter fertility . . . other than those in knockout infertile female mice.” In
response, appellants assert (Brief, page 11), “[a]s demonstrated by the examples
at page 10, administering probucol to female mice that are deficient in SR-BI,
and characterized by abnormal lipid levels restores their fertility. As discussed at
page 28 of the application, the results prove that it is the abnormal lipid levels
that cause the infertility.” The examiner provides no response to these
arguments. As we understand the examiner’s arguments, it appears that the
examiner’s basis for maintaining the rejection is his unsupported premise that
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