Appeal No. 1998-1489
Application No. 08/449,224
decision and accompanying opinion in the latter appeal, mailed February 28, 2001, the
board reversed the examiner’s rejections on non-prior art grounds. Having carefully
considered the similar issues in this appeal, we find, again, that the examiner (1) does
not provide sufficient analysis of the specification or how persons skilled in the art would
read the instant claims in light of the specification; (2) does not provide adequate
reasons to doubt the objective truth of statements made in appellants’ specification; and
(3) does not establish a prima facie case of indefiniteness of any appealed claim.
For reasons given in Appeal No. 1997-2204, we reverse the examiner’s
rejections under 35 U.S.C. § 112, first and second paragraphs, to the extent that they
involve the same issues previously decided.
II. Remaining issue under 35 U.S.C. § 112, first paragraph
The remaining issue, which merits separate discussion, is whether the examiner
erred in rejecting claims 1 through 9 and 22 under 35 U.S.C. § 112, first paragraph,
based on the unavailability of requisite starting materials for preparing some of the
compounds embraced by these claims (Examiner’s Answer, pages 4 through 6).
Specifically, claims 1 through 9 and 22 stand rejected under 35 U.S.C. § 112,
first paragraph, as based on a non-enabling disclosure because “competent sources of
starting materials for R4 as carbonyl and X as O or NY are lacking and are required for
enablement” (Examiner’s Answer, Page 4, section (11) ).
The examiner argues that
Dappen ‘417 patented the intermediate X as NY acids used for the
claimed amides subsequently to instant parent filing date, raising a prima facie
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