Ex parte WARREN et al. - Page 3




                 Appeal No. 1996-1513                                                                                     Page 3                        
                 Application No. 08/241,555                                                                                                             


                 Hwang, et al. (Hwang), “Isolation and Identification of                                                                                
                 Mosquito Repellents In Artemisia vulgaris”, Journal of Chemical                                                                        
                 Ecology, Vol. 11(9), pp. 1297-1306 (1985).                                                                                             

                                                                THE REJECTIONS                                                                          
                          Claims 22 through 23 and 25 through 29 stand rejected                                                                         
                 under 35 U.S.C. § 112, first paragraph, as failing to                                                                                  
                 adequately teach how to make and/or use the invention, i.e.,                                                                           
                 failing to provide an enabling disclosure.2                                                                                            
                                                                      OPINION                                                                           
                          We have carefully considered all of the argument advance                                                                      
                 by appellants and the examiner and agree with appellants that                                                                          
                 the aforementioned rejection is not well founded.  Accordingly,                                                                        
                 we will not sustain the rejection.                                                                                                     
                          The examiner has rejected the claimed subject matter                                                                          
                 under the first paragraph of 35 U.S.C. § 112 for lack of                                                                               
                 enablement.  The examiner has found that Hwang teaches that                                                                            
                 (-)-borneol, one of the enantiomorphs of racemic borneol is a                                                                          
                 repellent for Aedes aegyptae.  Hence appellants’ disclosure is                                                                         
                 not enabled.  See Hwang, pages 1304 - 1305.  Based upon this                                                                           
                 finding the examiner concludes that Hwang provides a reasonable                                                                        

                          2See Answer, page 4.                                                                                                          







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