Ex parte NESTOR JR. et al. - Page 3

          Appeal No. 94-3208                                                               
          Application 07/743,613                                                           

                In determining that quantum of prior art disclosure                        
                which is necessary to declare an applicant's invention                     
                "not novel" or "anticipated" within section 102 the                        
                stated test is whether a reference contains an                             
                "enabling disclosure," in the present context, a                           
                process by which the claimed compound could be                             
                made.  [Citation omitted.]                                                 
                [I]t is our view that if the prior art of record fails                     
                to disclose or render obvious a method for making a                        
                claimed compound, at the time the invention was made,                      
                it may not be legally concluded that the compound                          
                itself is in the possession of the public.  [Footnote                      
                Here, the examiner relies on appellants' acknowledgment that               
          "[t]he peptide identified as #83277 [in Barna and Deodhar] is in                 
          fact the peptide of this invention."  See the amendment after                    
          Final Rejection filed July 2, 1993 (Paper No. 10), page 2.  On                   
          this record, however, the examiner has not established that Barna                
          or Deodhar discloses or renders obvious a method for making the                  
          claimed polypeptide.  The examiner has not established that the                  
          cited references are enabling, i.e., sufficient to place peptide                 
          #83277 in the possession of the public.  See Akzo N.V. v. Int'l                  
          Trade Comm'n, 808 F.2d 1471, 1479, 1 USPQ2d 1241, 1245 (Fed. Cir.                
          1986); In re Hoeksema, 399 F.2d at 273-74, 158 USPQ at 600-01;                   
          In re Brown, 329 F.2d at 1011, 141 USPQ at 249.  For this reason,                
          we reverse the rejections under 35 U.S.C.  102(b).  Cf.  In re                  
          Donohue, 632 F.2d 123, 126, 207 USPQ 196, 199 (CCPA 1980) (PTO's                 


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