Appeal 2006-3401 Application 10/938,255 The Appellants claim a method of treating snoring by injecting a polymer into a soft palate of the patient and adding a stiffening agent to the polymer to alter the flexibility of the polymer. Further details of the claimed method under appeal are set forth in claim 1, which is the sole independent claim before us and reads as follows: 1. A method of treating snoring, comprising treating a patient's snoring by the steps of: injecting a polymer into a soft palate of said patient in an area between a hard palate and a trailing edge of said soft palate; and adding a stiffening agent to said polymer to alter the flexibility of said polymer with an alteration of said flexibility of said polymer due to said addition occurring after the injection of said polymer into said soft palate. Claims 1, 2, 4, and 5 stand rejected under the first paragraph of 35 U.S.C. § 112, as failing to comply with the enablement requirement.1 The Examiner concludes that claim 1 encompasses injecting the polymer and stiffening agent directly into the soft palate of a patient and that such direct injection is not enabled by the Appellants' disclosure (Answer 4). For the reasons set forth in the Answer and below, this rejection will be sustained. The first paragraph of § 112 requires that a specification must describe the manner and process of making and using a claimed invention so as to enable a person of skill in the art to make and use the full scope of the invention without undue experimentation. LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1344-45, 76 F.2d 1724, 1731 (Fed. 1 Because the dependent claims have not been separately argued, all claims will stand or fall with independent claim 1. 2Page: Previous 1 2 3 4 5 Next
Last modified: September 9, 2013