Appeal No. 2006-1993 Page 7
Application No. 10/147,651
Again, the examiner has provided no evidence or scientific reasoning to
support those assertions, and thus has not met his burden in demonstrating that
the specification fails to enable the full scope of the claimed subject matter. In
addition, 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).
Therefore, as the examiner has failed to set forth a prima facie case of
unpatentability under 35 U.S.C. § 112, first paragraph, we are compelled to
reverse the rejection.
Claims 13, 15 and 16 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Baldassarre.
According to the rejection:
Baldassarre teaches the administration of a formulation of
probucol [(4,4’-(isopropylidenedithio)bis(2,6-di-t-butylphenol)], as a
therapy to inhibit intimal wall thickening, a process that leads to
atherosclerosis and cardiovascular disease and as a therapy to
decrease total cholesterol (page 788, col. 1, parag. 1 and 2, and
table 2). The reduction in intimal wall thickening and cholesterol
levels is treatment or prevention of a disorder other than
atherosclerosis. Baldassarre states that the criteria for entry into
the clinical trial for probucol was primary hyperlipoproteinemia,
which is a disease due to abnormalities in cholesterol metabolism
(page 785, col. 1, parag. 2, lines 1-4). Thus, Baldassarre clearly
anticipates the claimed invention.
Examiner’s Answer, page 6.
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