Appeal No. 1998-1489
Application No. 08/449,224
The court agreed with that assessment. Observing that a conclusive
presumption of knowledge of prior art is, in effect, a statutorily required fiction under 35
U.S.C. § 102 which “cannot be found in section 112,” the court stated that
When no guide at all has been given, as here, an applicant must show that
anyone skilled in the art would have actually possessed the requisite knowledge
or would reasonably be expected to check the source which the applicant relies
upon to complete his disclosure and would be able to locate the information with
no more than reasonable diligence (emphasis added, citation omitted) [654 F.2d
at 107, 210 USPQ at 692-93].
On the facts presented, the court in Howarth affirmed the PTO rejection under 35
U.S.C. § 112, but those facts differ considerably from the facts presented here.
First, the examiner has not established that the intermediates of the Dappen
references are the only starting materials that may be used to prepare the instantly
claimed compounds. Second, appellants provide ample guidance how to make their
compounds where R4 is carbonyl (specification, page 7, lines 9 through 16). In addition,
appellants provide guidance how to make their compounds where X is O or NY,
including incorporation by reference of U.S. Patent No. 4,816,586 (specification, page 7,
lines 29 through 35). The examiner does not controvert the import of these disclosures.
This alone is sufficient to distinguish Howarth and to refute the examiner’s
position. Further, in their specification, appellants cite a number of articles from
recognized scientific journals reflecting the state of the prior art (see, for example,
pages 6 through 9 of the specification). It is not disputed that these publications were
available and accessible to the public at the time the invention was made. Appellants
also refer to and rely on the Endo reference in their Appeal Brief, Page 7, line 27.2 The
only argument lodged by the examiner respecting any reference cited and relied on by
2 Endo, Y. et al., Synthesis, 1980, 6, 461
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