Ex parte CORTRIGHT

Board of Patent Appeals and Interferences

Nov 28, 1997

07849191 (B.P.A.I. Nov. 28, 1997)

Application for patent filed March 11, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOYCE A. CORTRIGHT
__________
Appeal No. 94-4260
Application 07/849,1911
__________
RECONSIDERATION
__________
Before WILLIAM F. SMITH, GRON, and ELLIS, Administrative
Patent Judges.
ELLIS, Administrative Patent Judge.
REQUEST FOR RECONSIDERATION
We have carefully considered the appellant’s Request for
Reconsideration, but we decline to change our position for the
following reasons.
Appeal No. 94-4260
Application 07/849,191
2
I.
As an initial matter, the appellant points out that the
examiner “found the disclosure enabling for a portion of the
subject matter claimed.” Request for Reconsideration, p. 1.
The appellant directs our attention to p. 2 of the office
action mailed June 8, 1992 in Paper No. 2.
We acknowledge the examiner’s statements in the
referenced paper, however, the claims which he indicated would
have been enabled by the specification, if the subject matter
was limited to application of BAG BALM , are not now before®
us. That is, the claims under consideration by the examiner
at that time are not the same as the claims now on appeal.
Thus, the facts on appeal differ from the facts on which the
examiner’s decision was based. We also note that the
appellant acknowledges that there is a difference in the
subject matter now claimed since she has only urged that the
examiner found the specification “enabling for a portion of
the subject matter claimed.”
Appeal No. 94-4260
Application 07/849,191
We note the appellant’s statement that she “shared her2
Example 1 findings with two close friends whom she trusted to
keep her secret. The two friends applied her Example 1
technique to their own bald spots with the results reported in
Examples 2 and 3.” Request for Reconsideration, p. 6. The
facts of this event are not before us, however, if prosecution
of this application is resumed, the appellant should make all
these facts of record so that the examiner can consider
whether they would affect the patentability of the claimed
method.
3
Since the newly-claimed subject matter differs from that
of the original claims, claim 15, we remind the appellant that
under the provisions of 37 CFR § 1.196(b), this Board can
make, without restriction, a new ground of rejection.
Moreover, we point out that even had the examiner withdrawn an
enablement rejection to claims directed to the same subject
matter as the appealed claims, that rejection can be
reinstated at any time during prosecution by either this Board
(under § 1.196(b)) or by the examiner.
II.
With respect to claim 1, the appellant’s overall position
is best summarized as: the procedure described in Example 1
would have enabled one skilled in the art to make and use the
claimed method of treatment without undue experimentation. 2
Appeal No. 94-4260
Application 07/849,191
4
The appellant has carefully set forth the manner in which she
believes the factors articulated by the court in In re Wands,
858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) for
determining undue experimentation, apply to the facts of this
case.
We have considered all of the appellant’s arguments,
however, we find that she has misunderstood the primary reason
underlying our rejection. We do not quibble with the method
disclosed or the results observed. Rather, with respect to
claim 1, the problem is that the claim is directed to a method
of treating baldness “to restore hair growth.” Restoration
means “to return to its original state.” Webster’s II New
Riverside University Dictionary, Houghton-Mifflin Co. (1994).
The appellant’s reports of “three times as much hair growth as
two months earlier,” “filling-in some,” and “fuzz,” are not
equivalent to the restoration of the patients’ hair growth to
its original state. Accordingly, in our view, the
specification would not have enabled one skilled in the art to
make and use the method, as claimed.
III.
Appeal No. 94-4260
Application 07/849,191
5
The appellant urges that the method disclosed in Example
1 would have enabled one skilled in the art “to make and use”
the method described in claim 15. According to the appellant,
since the “invention stimulates hair growth, the papilla are
being activated to resume hair growth.” Request for
Reconsideration, p. 8. The appellant relies on the World Book
Encyclopedia to support her position. We have carefully
considered all the points raised, but find the appellant’s
arguments flawed on several accounts.
First, the appellant has failed to establish a
correlation between the application of BAG BALM and the®
“offsetting the effects of lower levels of male hormone being
supplied by the arteries to the papilla of scalp hair
follicles.” Even if we assume, arguendo, that BAG BALM®
reaches the papilla, there is no evidence of record that the
resultant hair growth is due to (i) the stimulation of the
papilla, and (ii) the offsetting the effects of lower male
hormone which is supplied by arteries to the papilla, and not
due to some other mechanism(s). The specification merely
“surmises” as to the mechanism by which BAG BALM acts and, in®
fact, suggests that alternative mechanisms might be
Appeal No. 94-4260
Application 07/849,191
6
responsible for the resultant hair growth such as “kill[ing]
or seriously weaken[ing] any bacteria about or in the papilla
and impairing its normal functioning.” Specification, p. 4.
Thus, the specification indicates that the underlying basis
for the observed physiological phenomenon can not be predicted
from the results obtained. We point to numerous cases in
which claims have been directed to, or encompassed by, a
physiological reaction, such as treating a disease or symptom,
the subject matter was found highly unpredictable and
unpredictability alone provide a reasonable doubt as to the
accuracy of broad statements made in support of the enablement
of a claim. In re Fisher, 427, F.2d 833, 839, 166 USPQ 18, 24
(CCPA 1970); In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367,
369-370 (CCPA 1971) (“In the field of chemistry generally,
there may be times when the well-known unpredictability of
chemical reactions will alone be enough to create a reasonable
doubt as to the accuracy of a particular broad statement put
forward as enabling support for a claim.”)
Moreover, we note that the specification does not provide
a single working example of the invention as described in
Appeal No. 94-4260
Application 07/849,191
7
claim 15; nor does it provide any guidance as to how to assay
for the claimed results. That is, the specification does not
provide any assays by which one skilled in the art could
determine whether the effects of lower male hormone levels
have been offset, or even if BAG BALM has reached the®
papilla. Accordingly, we maintain our position that with
respect to claim 15, the appellant is “tossing out the mere
germ of an idea.” Genentech Inc. V. Novo Nordisk A/S, 108
F.3d 1361, 1366, 42 USPQ2d 1001, 1005 (Fed. Cir. 1997). The
specification “provides only a starting point, a direction for
further research.” Id.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
DENIED
Appeal No. 94-4260
Application 07/849,191
8
)
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TEDDY S. GRON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOAN ELLIS )
Administrative Patent Judge )
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