Appeal No. 95-4493
Application 07/756,646
the reference must contain an enabling disclosure. See In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
Appellants argue that the teaching of Carter is not enabling for
the separation of alpha-1 compound from the alpha and beta
components (reply brief, page 2). The reply to this argument by
the examiner is that “it is a matter of routine separation to
isolate the various components so formed” (examiner’s response to
reply brief, page 2). However, the examiner has presented no
evidence that a skilled artisan would expect epimers to be
produced and would know how to isolate and purify them from such
a fermentation mash process. See In re LeGrice, 301 F.2d 929,
936, 133 USPQ 365, 372 (CCPA 1962)(A reference anticipates a
claim if it discloses the claimed invention “such that a skilled
artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the
invention.”, emphasis in original).
Even assuming arguendo that the alpha-1 product was produced
by Carter, there was no recognition by Carter that any fraction
contained a useful product other than the alpha and beta
compounds in fractions 7 and 11-13, respectively (see column 8,
lines 47-49). Carter does not recognize or appreciate that alpha
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