Appeal No. 95-4342
Application 07/938,832
Jackson, “The use of polyacrylamide-gel electrophoresis for the high-resolution separation
of reducing saccharides labelled with the fluorophore 8-aminonaphthalene-1, 3,6-
trisulphonic acid,” Biochemistry Journal, Vol. 270, pp. 705-713 (1990).
Jackson, “Polyacrylamide Gel Electrophoresis of Reducing Saccharides Labeled with th e
Fluorophore 2-Aminoacridone: Subpicomolar Detection Using an Imaging System Based
on a Cooled Charge-Coupled Device,” Analytical Biochemistry, Vol. 196, pp. 238-244
(1991).
Jackson (PCT Applicatioin) WO 91/05256 Apr. 18, 1991
Claims 3 through 7, 14 through 16, 18 and 23 through 32 stand rejected under 35
U.S.C. § 112, first paragraph, as being non-enabled. Claims 3 through 7, 14 through 16,
18 and 23 through 32 also stand rejected under 35 U.S.C. § 103 as unpatentable over the
three Jackson references listed above in combination with Lindberg or Levery. We reverse
both of these rejections. In addition, we raise an issue for the examiner’s consideration
upon return of the application to the examining group.
DISCUSSION
Enablement
The examiner maintains that the specification, while providing a method of
determining the identities and linkage sites of a carbohydrate’s constituent
monosaccharides, is not enabling for determining the “entirety of the structure” of a
complex carbohydrate. All of the claims have been rejected on this basis. See the
Answer, page 5. Having considered the positions of appellant and the examiner, we are in
agreement with appellant that the examiner has failed to establish that the phrase
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