Ex Parte Knudson et al - Page 2

                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.                                                     
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