Appeal No. 94-3351
Application 07/919,679
The references of record relied upon by the examiner are:
Watts 4,816,453 Mar. 28, 1989
King 4,853,376 Aug. 1, 1989
Buchheit 4,910,193 Mar. 20, 1990
Claims 1 through 5 and 9 through 13 stand rejected under 35
USC § 112, first paragraph, enablement requirement.
Additionally, all appealed claims stand rejected under 35 USC
§ 103 over Watts in view of King and Buchheit.
THE REJECTION UNDER 35 USC § 112, FIRST PARAGRAPH
According to the examiner, the ?how to make and use
requirement? of 35 USC § 112, first paragraph requires an
enabling disclosure commensurate in scope with the protection
sought by the claims. The examiner further alleges that
appellants, ?it appears,? have not enabled and disclosed ?how to
make, test and use? the compounds claimed in the generic scope
for the presently claimed invention. See the Answer at page 3.
We reverse.
It is well settled law that the examiner has the ?burden of
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007