Appeal No. 2007-1080
Application No. 10/790,658
After considering the record before us, we find that the appealed
rejection under 35 U.S.C. § 112, first paragraph, is not in condition for a
decision on appeal. Accordingly, we vacate1 and remand the application to
the Examiner to consider the issues discussed below and to take appropriate
action not inconsistent with these views.
We also conclude that the appealed rejection under 35 U.S.C. § 103(a)
does not cite the most pertinent prior art. In particular, Milgram2 – cited in
the specification (at 5: 14) – is closer and more relevant prior art than the
references now of record. For this reason, we vacate the pending rejection
under 35 U.S.C. § 103(a), and remand the application to the Examiner to
determine whether a prior art rejection should be made over Milgram alone
or in combination with other prior art.
ENABLEMENT UNDER § 112, FIRST PARAGRAPH
Claim 26 is drawn to a method of treating immune dysfunction that is
associated with reduced levels of gamma-interferon by administering
desmethylselegiline. The Examiner contends that the claimed invention is
not enabled (Answer 3-6).
In rebutting the grounds of the rejection, Appellants rely on the Billiau
publication which describes the role of gamma-interferon in the immune
system (Br. 11). After reviewing Billiau, we find evidence in it, not
1 Lest there be any misunderstanding, the term “vacate” in this context
means to set aside or to void. When the Board vacates an examiner’s
rejection, the rejection is set aside and no longer exists. See Ex parte
Zambrano, 58 USPQ2d 1312, 1313 (Bd. Pat. App. & Int. 2000).
2 Milgram et al. (Milgram), U.S. Pat. 5,387,615, Feb. 7, 1995.
2
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