Appeal 2007-1154
Application 09/367,950
The Examiner relies on the following prior art references to show
unpatentability:
Carling WO 93/11773 June 24, 1993
Aberg US 5,795,564 Aug. 18, 1998
Ryrfeldt, “PULMONARY DISPOSITION OF THE POTENT
GLUCOCORTICOID BUDESONIDE, EVALUATED IN AN ISOLATED
PERFUSED RAT LUNG MODEL,” Biochemical Pharmacology, Vol. 38,
No. 1, pp. 17-22 (1989).
The rejections as presented by the Examiner are as follows:
1. Claims 13, 35, 36, and 42 stand rejected under the enablement provision
of 35 U.S.C. § 112, first paragraph.
2. Claims 13-15, 17, 18, 20-36, 38, 42, and 43 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Carling.
3. Claims 16 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Carling, Aberg, and Ryrfeldt.
We reverse the rejection under the enablement provision of 35 U.S.C.
§ 112, first paragraph. We find, however, that the rejections under 35
U.S.C. § 103(a) are not in condition for a decision on appeal. For the
reasons that follow remand the application to the Examiner to consider the
following issues and to take appropriate action.
DISCUSSION
Enablement:
Claims 13, 35, 36, and 42 stand rejected under the enablement
provision of 35 U.S.C. § 112, first paragraph.
The Examiner finds that Appellant’s Specification does not provide an
enabling disclosure “for the ‘prevention of an acute episode of asthma’”
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