And Appeal No 94-1146
Application 07/746,050
possession of the public. In re Payne, 606 F.2d at 314-15,
203 USPQ at 255. On considering the second part of the two-
part test, we find that the examiner has not supported his
allegation that the claimed antibiotic compounds would have
been obvious with evidence sufficient to justify a conclusion
that the prior art would have enabled one skilled in the art
to make and use appellants’ antibiotic compounds without
appellants’ disclosure.
In his declaration filed March 26, 1992 (Declaration of
Min Chu (Chu), Paper No. 26), Chu declares (Chu, pp. 2-3):
THAT, the structural formula of the antibiotic
AB-85 . . . of the Japanese patent . . . [has] the
formula 2 on page 15 of the US Patent Application Serial
No. 07/747,456, filed 08/12/91 . . .[; and]
THAT, based on information and belief and my
expertise in synthetic organic chemistry, I am aware of
no synthetic method as of August 3, 1988 of
selectively activating and removing one, two or three
of the CH groups at C-5', C-9' and C-13' of AB-85 to
2
form any of the aglycone of the compounds of this
invention of formula 1. . .[;]
THAT, based on information and belief and my
expertise in synthetic organic chemistry, I am aware
of no chemical method in existence as of August 3,
1988 of synthesizing the compounds of this invention
except by the fermentation of Actinomadura fulva subsp
uruguayensis of this invention; and
Conclusion
In summary, (1) I am aware of no synthetic
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