Appeal 2007-0852
Application 09/919,195
Appellants argue that one of ordinary skill in the art could use the
assay methods described in the patents mentioned in the Specification to test
compounds described in the patents incorporated by reference into the
Specification at page 13. However, this disclosure also fails to provide an
adequate written description of compounds meeting the definition of
"antagonist" set forth in the specification and as recited in claim 13.
Just as in University of Rochester, the present application claims a
genus of chemical compounds (RARβ antagonists having specific
modulating activity and not specific to at least one other RAR receptor
subtype) for use in the claimed method. However the Specification fails to
describe which compounds have this antagonist function. The screening
assays present in the patents incorporated by reference into the Specification
are insufficient to show Appellants were in possession of compounds having
RARβ antagonist activity.
In view of the above, the written description rejection of the claims is
affirmed.
Enablement
2. Claims 13-28 stand rejected under 35 U.S.C. § 112, first paragraph for
lack of enablement. We select claim 13 as representative of this rejection since the
claims are not separately argued by Appellants.
“When rejecting a claim under the enablement requirement of section 112,
the PTO bears an initial burden of setting forth a reasonable explanation as to why
it believes that the scope of protection provided by that claim is not adequately
enabled by the description of the invention provided in the specification.” In re
Wright, 999 F.2d 1557, 1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
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