Appeal No. 95-0266
Application 07/851,517
The subject matter on appeal relates to a class of compounds
which are precursors of rigidified dyes. This appealed subject
matter is adequately illustrated by independent claim 1, a copy
of which taken from the appellant’s brief is appended to this
decision.
No prior art has been relied upon by the examiner in the
sole rejection before us on this appeal.
The appealed claims stand rejected under the first paragraph
of 35 U.S.C. § 112 as being based upon a disclosure which would
not enable one having ordinary skill in the art to make the here
claimed compounds. On page 3 of the answer, the examiner
expresses his position as follows:
Save for specific Examples 3-7, there is no indication
as to how the myriad of compounds claimed are to be
made. Additionally, there is no indication at all for
the source of the necessary starting materials needed
to make the myriad of compounds claimed (particularly
the various compounds as are identified by variables
R , R , and R taken together with another variable).1 5 4
We cannot sustain this rejection.
As correctly argued by the appellant, the PTO’s burden of
proof in questioning the enablement of an applicant’s disclosure
requires that the PTO advance acceptable reasoning inconsistent
with enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982). In this case, the examiner has
2
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007