Appeal No. 95-4493
Application 07/756,646
Appellants argue that there is a lack of enabling disclosure
in the applied prior art (brief, page 4). The compound alpha-1
is a natural product made by fermentation of streptomyces lidicus
ssp. tanzanius. As noted by the examiner (answer, page 10),
appellants and Carter II ferment the same microorganism.
However, without the use of hindsight from appellants’
specification, there is nothing in the Carter II reference that
discloses or suggests that an epimer of alpha can be obtained
from the method disclosed by the Carter II reference. It is
improper for the examiner to use hindsight based on information
gleaned only from appellants’ disclosure. See In re McLaughlin,
443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
The examiner alleges that preparing the claimed invention is
considered within the “purview of the skilled artisan because
both the claimed and the prior art compounds are obtained by the
fermentation of the same Streptomyces lydicus sp." and
“resolution of various epimers is also considered to be within
the purview of the skilled artisan” (answer, page 10).
Even though the claimed and prior art compounds are
concededly obtained from fermentation of the same microorganism,
the process of preparation disclosed by appellants is markedly
different from that disclosed by Carter II. For example, the
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