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Ex parte NESTOR JR. et al. - Page 3
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Board of Patent Appeals and Interferences > 1997 > Ex parte NESTOR JR. et al. - Page 3
Appeal No. 94-3208
Application 07/743,613
In determining that quantum of prior art disclosure
which is necessary to declare an applicant's invention
"not novel" or "anticipated" within section 102 the
stated test is whether a reference contains an
"enabling disclosure," in the present context, a
process by which the claimed compound could be
made. [Citation omitted.]
and
[I]t is our view that if the prior art of record fails
to disclose or render obvious a method for making a
claimed compound, at the time the invention was made,
it may not be legally concluded that the compound
itself is in the possession of the public. [Footnote
omitted.]
Here, the examiner relies on appellants' acknowledgment that
"[t]he peptide identified as #83277 [in Barna and Deodhar] is in
fact the peptide of this invention." See the amendment after
Final Rejection filed July 2, 1993 (Paper No. 10), page 2. On
this record, however, the examiner has not established that Barna
or Deodhar discloses or renders obvious a method for making the
claimed polypeptide. The examiner has not established that the
cited references are enabling, i.e., sufficient to place peptide
#83277 in the possession of the public. See Akzo N.V. v. Int'l
Trade Comm'n, 808 F.2d 1471, 1479, 1 USPQ2d 1241, 1245 (Fed. Cir.
1986); In re Hoeksema, 399 F.2d at 273-74, 158 USPQ at 600-01;
In re Brown, 329 F.2d at 1011, 141 USPQ at 249. For this reason,
we reverse the rejections under 35 U.S.C. § 102(b). Cf. In re
Donohue, 632 F.2d 123, 126, 207 USPQ 196, 199 (CCPA 1980) (PTO's
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Last modified: November 3, 2007
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