Appeal No. 95-0777
Application 07/756,411
render obvious a method for making the claimed compounds. As
stated by the court in In re Hoeksema : 3
Thus, upon careful reconsideration it 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]. In this context, we
say that the absence of a known or obvious process for
making the claimed compounds overcomes a presumption
that the compounds are obvious, based on close
relationships between their structures and those of
prior art compounds.
See also In re Payne, 606 F.2d 303, 314-15, 203 USPQ 245, 255
(CCPA 1979), and In re Brown, 329 F.2d 1006, 1011, 141 USPQ 245,
249 (CCPA 1964). References relied upon to support a rejection
under 35 U.S.C. § 103 must provide an enabling disclosure, i.e.,
they must place the claimed invention in the possession of the
public. In re Payne, 606 F.2d at 314, 203 USPQ at 255.
Appellants argue that there is no known way to make the
substitution proposed by the examiner (brief, page 7).
Appellants cite evidence from Carter II and U.S. Patent No.
5,077,277 (of record) that the proposed methods of preparing the
claimed compounds, as suggested by the examiner, would not result
in the claimed compounds (see page 8 of the brief).
3399 F.2d 269, 274, 158 USPQ 596, 601 (CCPA 1968).
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