Appeal No. 97-1999
Application 07/390,745
subject matter bear a reasonable correlation to the scope of
enablement provided by the specification. See generally Amgen
Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 1212-1214,
18 USPQ2d 1016, 1026-1028 (Fed. Cir.), cert. denied, 502 U.S.
856 (1991), and In re Fisher, 427 F.2d 833, 836, 839, 166 USPQ
18, 21-22, 24 (CCPA 1970). It appears from the evidence in
this record that the limited teachings in the specification
with only one example of an effective partial agonist, would
not have enabled persons skilled in an art, which was
unpredictable at the time of this invention, to determine
which compounds are partial agonists for the strychnine
insensitive glycine modulatory site of the N-methyl-D-
aspartate receptor complex and predict which of those would
effectively alleviate the symptoms of any
neuropsychopharmacological disorder, without undue
experimentation.
However, in that the examiner, based on much the same
evidence, declined to raise the issue of compliance with the
first paragraph of 35 U.S.C. § 112 either in favor of the
rejection under section 103 or for reasons otherwise unclear
to this panel, we leave the matter of compliance with the
first paragraph of 35 U.S.C. § 112 based on all the evidence
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