Appeal No. 95-4674
Application 08/095140
Adefinitely unpredictable in the absence of undue experimentation and guidance from the instant
specification@ (answer, pages 5-6). Contrary to the examiner=s position (answer, page 5), we must
agree with appellants that the chemical compounds defined in the Markush claims, taken as a whole,
have a Acommon compound core [which is] comprised of a molecule having three carbamate ester
groups which are linked through specific groups@ (brief, page 3). We further find that the assertions as
to the scope of objective enablement set forth in the specification with respect to a method for reducing
cholesterol absorption@ (e.g., appealed claim 19) are directed to compounds containing this Acommon
core.@
Thus, in the absence of analysis demonstrating why the assertions as to the scope of objective
enablement set forth in the specification with respect to the Markush groups of the appealed claims are
in doubt without undue experimentation, see generally Wands, supra, which would be tantamount to
demonstrating a lack of a community of utility, properties and chemical structure, the examiner=s reasons
based essentially on the absence of a Acommon core@ fail to make out a prima facie case that the
claims constitute an improper Markush group and are non-enabled under ' 112, first paragraph,
enablement. Indeed, the mere allegation that the range of results reported in the Table would suggest a
similar range of results, possibly including A0@ effectiveness, in the asserted utility across the range of
compounds encompassed by the appealed claims in Markush format does not serve such purposes
because Athere is no requirement in ' 112 that all of the claimed compounds have the same degree
of utility [emphasis ours],@ In re Gardner, 475 F.2d 1389, 1392, 177 USPQ 396, 398 (CCPA 1973),
and that all compounds must be operative with respect to that utility. Sarett, supra.
The examiner=s decision is reversed.
Reversed
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