Appeal No. 95-2603
Application 07/915,871
23. Otherwise, we believe that it is unlikely Barefield would
have made a positive scientific assertion that his Compound 2
"is very insoluble in water ***" (page 303, first footnote).
In this regard, we point out that the language of appealed
claim 23 merely calls for a “pharmaceutically acceptable
carrier”. Water is a known pharmaceutically acceptable
carrier and thus the mixture of water and bicyclam of10
Barefield meets all the limitations of claims 7 and 23 (i.e.,
these claims on appeal do not require that the active
ingredient is soluble in the carrier).
Claim 23 is rejected under 35 U.S.C. § 112, first
paragraph, as lacking enablement as to how to make the claimed
active ingredients in view of Ciampolini. Claim 23 lists
active ingredients with 2 to 6 carbon atom chains as linking
groups between the cyclam rings. Appellants’ only enablement
regarding “how to make” is the disclosure that “[A] number of
the active ingredients according to the invention are known,
and the compounds may be prepared by identical methods or
methods analogous thereto.” (specification, page 4).
10 Ibid.
17
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