Appeal No. 2006-1608 Page 6
Application No. 09/978,593
Here, the claims are directed to a “method comprising [ ] contacting a
virus-infected cell with an extract from Ocimum gratissimum in an amount
effective to inhibit cytopathic effects of the virus in the cell” (claim 31). Thus,
while it is fair to say that the claims encompass a method that achieves a
clinically effective therapeutic response, they do not require it. Cf. In re Cortright,
165 F.3d 1353, 49 USPQ2d 1464 (Fed. Cir. 1999) (claims to a method of
“treating scalp baldness” could be enabled even if the method did not produce a
full head of hair).
We conclude that the potential problems identified by the examiner may
indeed complicate treatment of a HIV in a patient, but such problems need not be
overcome in order to “contact[ ] a virus-infected cell with an extract from Ocimum
gratissimum in an amount effective to inhibit cytopathic effects of the virus in the
cell” - all that is required by the claims. Thus, the examiner has not adequately
explained why practicing the claimed method would have required undue
experimentation.
Moreover, a claim may encompass inoperative embodiments and still
meet the enablement requirement of 35 U.S.C. § 112, first paragraph. See Atlas
Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ
409, 413 (Fed. Cir. 1984), In re Angstadt, 537 F.2d 498, 504, 190 USPQ 214,
218 (CCPA 1976), In re Cook, 439 F.2d 730, 732, 169 USPQ 298, 300 (CCPA
1971). And the stage at which an invention in this field become useful is well
before it is ready to be administered to humans.” In re Brana, 51 F.3d 1560,
1568, 34 USPQ2d 1436, 1442 (Fed. Cir. 1995). (While the Brana court referred
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007