Appeal No. 2007-0091
Application No. 09/765,491
patent without conducting an inquiry into whether or not that patent is
enabled. . . . The applicant, however, can then overcome that rejection by
proving that the relevant disclosures of the prior art patent are not enabled.”
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355, 65
USPQ2d 1385, 1416 (Fed. Cir. 2003). Thus, “a presumption arises that both
the claimed and unclaimed disclosures in a prior art patent are enabled.” Id.
Wirostko’s disclosure is presumed to be enabling. Appellant has
provided no evidence to show that undue experimentation would have been
required to do what Wirostko teaches had already been done: treat rosacea
with collagenase-inhibiting tetracyclines. The rejection of claim 17 under 35
U.S.C. § 102(e) is affirmed.
4. OBVIOUSNESS: CLAIMS 4-6
Claims 4 and 5 stand rejected under 35 U.S.C. § 103 as obvious over
Deutch3 combined with either Brem4 or Andrulis.5 Similarly, claims 4-6
stand rejected under 35 U.S.C. § 103 as obvious over Deutch combined with
Teicher.6 The Examiner relies on Deutch for its definition of “angiogenesis”
as including formation of lymph vessels (lymphangiogenesis), and cites
Brem, Andrulis, and Teicher as teaching that minocycline, thalidomide, and
TNP-470, respectively, were known angiogenesis inhibitors. (Answer,
pages 6-8.) The Examiner concludes that the combined references would
have led those skilled in the art to employ minocycline, thalidomide, and
TNP-470 for the treatment of lymphangiogenesis. (Id.)
3 Deutch et al., U.S. Patent 5,190,918, issued March 2, 1993.
4 Brem et al., U.S. Patent 6,482,810, issued Nov. 19, 2002.
5 Andrulis, Jr. et al., U.S. Patent 5,654,312, issued August 5, 1997.
6 Teicher et al., U.S. Patent 5,776,898, issued July 7, 1998.
7
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