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.] and [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 omitted.] 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 -3-Page: Previous 1 2 3 4 5 NextLast modified: November 3, 2007