Appeal No. 1999-1407
Application No. 08/295,744
the applicants to go to the trouble and expense of supporting his presumptively
accurate disclosure.” In re Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370
(CCPA 1971).
On this record, the examiner finds (Answer, page 4) that appellants’
“disclosure is enabling only for claims limited to the compounds whose mode of
synthesis has been demonstrated in the specification and whose functionality has
been shown.” We note that the examiner makes no effort to identify those
compounds he considers to be enabled by appellants’ disclosure. Instead, the
examiner argues (id.) that the “breadth of these claims includes an enormous variety
of compounds, the specification lacks guidance on methods of synthesis of each
compound and whether the claimed compounds would function in the assay or
would inhibit the assay.”
With regard to the enabling scope of appellants’ disclosure, as it applies to
“how to make” the claimed compounds, the examiner argues (Answer, page 4)
“[t]here is specific prior art which indicates that the synthesis of new nucleotide
analogues is not a trivial process and is prone to failure.” To support this
conclusion, the examiner relies on three prior art references. The examiner applies
Bergstrom (id.) to teach that “attempts to apply the reaction to the synthesis of an
oligothymidine analogue failed because Fp ethylene apparently reacts with
phosphotriester groups….” However, as appellants point out (Brief, page 7)
Bergstrom shows “simply that those skilled in the art were aware of two techniques
4 Paper No. 32, mailed February 25, 1999.
4
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