Appeal No 94-1046
Application 07/747,456
B. Claims 1-9 stand rejected under 35 U.S.C. § 103 as
being unpatentable in view of antibiotic AB-85 disclosed in
Japanese Patent Publication 59-18035, published April 25, 1984.
C. Claims 1-9 stand provisionally rejected for
obviousness-type double patenting of Claims 1-12 of commonly
assigned copending Application 07/746,050.
D. Claims 1-9 stand provisionally rejected for
obviousness-type double patenting of Claims 1-9 and 11 of
commonly assigned Application 07/746,059.
3. Discussion
A. Description requirement of Section 112
We reverse the rejection of the claimed subject matter for
noncompliance with the description requirement of the first
paragraph of 35 U.S.C. § 112. The examiner’s doubts that the
specification, as originally filed, describes the compound of
formula 1 of Claim 1, have not been adequately explained.
Compliance with the description requirement of 35 U.S.C.
§ 112, first paragraph, is a question of fact. Vas-Cath Inc. V.
Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir.
1991). To satisfy the description requirement, the specification
as originally filed must convey to persons skilled in the art
that applicants invented the subject matter claimed. In re
Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984);
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