And Appeal No 94-1146
Application 07/746,050
35 U.S.C. § 103. The prior art must place the claimed
compounds in the possession of the public. In re Payne, 606
F.2d at 314, 203 USPQ at 255. The examiner has not satisfied
his burden to establish that the prior art would have enabled
persons skilled in the art to make the claimed compounds
without undue experimentation. Accordingly, we reverse the
examiner’s rejection.
B. Obviousness-type double patenting
The provisional obviousness-type double patenting
rejection of Claims 1-12 in view of the subject matter of
Claims 1-9 and 11 of Application 07/746,059 is hereby
reversed. The rejection is moot because the application
appears to have been abandoned.
We also reverse the examiner’s provisional obviousness-
type double patent rejection of Claims 1-12 in view of the
subject matter of Claims 1-9 of commonly assigned, copending
Application 07/747,456. The examiner finds (Examiner’s
Answer, p. 3, first full paragraph):
. . . [T]he conflicting claims are not identical . . .
because the difference between the claimed compounds
and the compound of the copending application is at
the 5, 9 or 13 position i.e. the compound of the
copending application has ethyl groups at the 5, 9
and 13 position [sic] while the claimed compound has
a methyl group at the 5, 9 or 13 positions [sic].
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