Appeal No. 96-0008
Application 08/243,428
immediately obtain desired results, make certain
experiments and adaptations, within the skill of the
competent worker. The failures of experimenters who
have no interest in succeeding should not be
accorded great weight.
Upon reviewing appellants' evidence of non-enablement,
and the examiner's analysis thereof, we find that appellants'
evidence is of sufficient weight to effectively shift to the
examiner the burden of demonstrating that one of ordinary
skill in the art would have been able to make the presently
claimed compounds at the time of filing the grandparent
application. Since the examiner has not come forth with a
convincing line of reasoning based on scientific evidence that
refutes appellants'
evidence, we find that appellants have rebutted the
presumption of validity attached to the Ohmori patents. See
Hoeksema at 158 USPQ 601.
Appellants rely upon the Moore article and the
publication of Chen et al. and Gorbunova, as well as the Hung
declaration, as evidence that the reaction between the
perhalogenated alkyl iodide and the allyl alcohol disclosed by
the Ohmori patent (see Ohmori I at col. 3, lines 60-65) does
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