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Ex Parte STILL et al - Page 7
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Board of Patent Appeals and Interferences > 2003 > Ex Parte STILL et al - Page 7
Appeal No. 2003-0998 Page 7
Application No. 08/676,143
(3) the prior art shows that synthesis of combinatorial libraries often results
in products having no utility; and
(4) the claimed invention involves unpredictability because organic
synthesis reactions can be unpredictable, and “it is not possible to predict, a
priori, the properties of compounds that have not been previously prepared.”
The examiner cited no evidence to support any of these findings. Even
assuming for the sake of argument that they are supported by the evidence,
however, the examiner has not adequately explained how these findings support
a conclusion of nonenablement.
While the broadest claims on appeal are not limited to synthetic receptors
having specific, defined templates, the claims nonetheless recite structural
requirements for the templates. That is, the templates of the recited receptors
must fall within one of the genera of substituted “monocyclic aliphatic
hydrocarbons”, substituted “polycyclic aliphatic hydrocarbons” or substituted
“monocyclic heterocycles”. Thus, while the claims are not limited to templates
defined by chemical formulae, the examiner erred in finding that “the claimed
invention is devoid of structural and/or functional constraints regarding the
chemical compounds encompassed by the claimed ‘synthetic receptor libraries’.”
Examiner’s Answer, page 5
In addition, while the specification does not exemplify all of the synthetic
receptors encompassed by the claimed libraries, the examiner has not disputed
Appellants’ contention that the specification exemplifies synthetic receptors
having either a monocyclic heterocycle or a polycyclic aliphatic hydrocarbon as a
template. See the Examiner’s Answer, pages 13-14. Nor has the examiner
provided evidence or sound scientific reasoning to contradict Appellants’ position
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Last modified: November 3, 2007
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