Appeal No. 2006-1993 Page 5
Application No. 10/147,651
atherosclerotic plaque in the aortic sinuses and progressive heart
block and determining the effects of the compound on cardiac
fibrosis, myocardial infarction, defects in electrical conductance,
atherosclerosis, unstable plaque, stroke, diseases associated with
abnormal cardiac structure or function, or elevated cholesterol or
lipoprotein levels in the mouse relative to control mice not treated
with the compound, does not reasonably provide enablement for
the method comprising administering a compound to a mouse
having decreased expression of active SR-BI and ApoE for reasons
presented in the office actions mailed August 25, 2004 and March
16, 2005. The specification does not enable any person skilled in
the art to which it pertains, or with which it is most nearly
connected, to make and use the invention commensurate in scope
with these claims.
Examiner’s Answer, page 3.
“[A] specification disclosure which contains a teaching of the manner and
process of making and using the invention in terms which correspond in scope to
those used in describing and defining the subject matter sought to be patented
must be taken as in compliance with the enabling requirement of the first
paragraph of § 112 unless there is reason to doubt the objective truth of the
statements contained therein which must be relied on for enabling support.” In re
Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971) (emphasis in
original). “[It] is incumbent upon the Patent Office, whenever a rejection on this
basis is made, to explain why it doubts the truth or accuracy of any statement in
a supporting disclosure and to back up assertions of its own with acceptable
evidence or reasoning which is inconsistent with the contested statement.” Id. at
224, 169 USPQ at 370. Here, the examiner has not provided “acceptable
evidence or reasoning which is inconsistent” with the specification, and therefore
has not met the initial burden of showing nonenablement.
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