Appeal No. 2002-1254 Page 6
Application No. 09/411,381
and applicant’s rebuttal evidence then be evaluated only on its
knockdown ability. . . . Prima facie obviousness is a legal
conclusion, not a fact. Facts established by rebuttal evidence must
be evaluated along with the facts on which the earlier conclusion
was reached, not against the conclusion itself. Though the tribunal
must begin anew, a final finding of obviousness may of course be
reached, but such finding will rest upon evaluation of all facts in
evidence, uninfluenced by any earlier conclusion reached . . . upon
a different record.
Appellant has provided evidence showing that the prior art would not have
enabled those skilled in the art to make the compositions defined by the claims
on appeal. The examiner has provided no evidence to the contrary. Therefore,
the weight of the evidence in the record tends to show that the prior art
disclosure was not enabling for the claimed product.
“No doctrine of patent law is better established than that a prior patent or
other publication to be an anticipation must bear within its four corners adequate
directions for the practice of the patent invalidated.” Dewey & Almy Chem. Co. v.
Mimex Co., 124 F.2d 986, 989, 52 USPQ 138, 142 (2d Cir. 1942) (Learned
Hand, J.). What was well-settled sixty years ago is still the law today. See
Amgen, 314 F.3d at 1354, 65 USPQ2d at 1416 (“A claimed invention cannot be
anticipated by a prior art reference if the allegedly anticipatory disclosures cited
as prior art are not enabled.”). The rejection under 35 U.S.C. § 102(b) is
reversed.
The examiner also rejected claims 28 and 29 as obvious in view of Latter,
on the basis that it would have been obvious to modify Latter’s atovaquone
composition by adding xanthan gum. See the Examiner’s Answer, pages 3-4.
We have concluded that Latter does not disclose the atovaquone particles
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