Appeal No. 95-0777
Application 07/756,411
II, in producing alpha and beta, does not employ the same method
as appellants, using a different nutrient system, a different
number of fermentations, purifying certain fractions, etc.
(compare page 1511 of Carter II with pages 10-13 of the
specification).
Naito does not cure the deficiency in the enablement of
Carter II. Naito is directed to a different family of
antibiotics prepared by a totally different semi-synthetic
method.
Given the disclosures of Carter II and Naito, we hold that
compound Gamma was not placed in the possession of the public at
the time appellants’ invention was made. Accordingly, the
rejection of claims 1, 4 and 5 under 35 U.S.C. § 103 as
unpatentable over Carter II in view of Naito is reversed.
B. The Rejection under 35 U.S.C. § 102(b)
The examiner has rejected appealed claim 1, directed to the
Gamma compound, as being anticipated by Carter since “[T]he
instant compound is obtained from the same strain, by the same
process and as such is inherently present in the prior art
concentrate” (answer, page 6).
Appellants’ response to this new ground of rejection is that
the law is clear that for a rejection based upon inherency to be
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