Ex Parte Greco

Board of Patent Appeals and Interferences

Aug 31, 2007

10604011 (B.P.A.I. Aug. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DALE B. SCHENK
__________

Appeal 2006-3375
Application 09/723,765
Technology Center 1600
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Decided: October 16, 2007
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Before TONI R. SCHEINER, ERIC GRIMES, and
NANCY J. LINCK, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the decision entered March 16,
2007. That decision reversed rejections for nonenablement and lack of
written description, and affirmed rejections for obviousness-type double
patenting.
Appellant states that he “agrees with the ultimate holding of the
Decision on Appeal” (Req. Rhg. 2) but requests that we grant rehearing in
order to address a specific argument made by the Examiner in the Answer;
Appeal 2006-3375
Application 09/723,765

specifically, that the instant claims “lack enablement absent evidence of a
complete cure or complete prevention of Alzheimer’s disease” (id.).
Appellant’s request is denied, for two reasons. First, the purpose of a
Request for Rehearing is to point out issues of law or fact “believed to have
been misapprehended or overlooked in rendering the Board’s opinion,” 37
C.F.R. § 41.79, not to request elaboration upon the reasoning in an opinion.
Second, we do not agree that we overlooked the argument that Appellant
points to in his Request for Rehearing. The opinion states:
A method of treatment can be enabled even if it has not been
shown to be, and even if it never turns out to be, clinically
useful. “‘[O]ne who has taught the public that a compound
exhibits some desirable pharmaceutical property in a standard
experimental animal has made a significant and useful
contribution to the art, even though it may eventually appear
that the compound is without value in the treatment of
humans.’” Brana, 51 F.3d at 1567, 34 USPQ2d at 1442
(quoting In re Krimmel, 292 F.2d 948, 953, 130 USPQ 215, 219
(CCPA 1961)). If those skilled in the art would reasonably
expect the claimed method to produce a therapeutic effect, it
can be enabled even if it has not (yet) been shown to be safe
and effective in clinical trials.
(Opinion issued March 16, 2007, p. 11-12.) In our view, this part of the
opinion reasonably appears to address the subissue of concern to Appellant.

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Appeal 2006-3375
Application 09/723,765

SUMMARY
We have considered Appellant’s Request for Rehearing but decline to
make any substantive change in our previous opinion.

REHEARING DENIED

lbg

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