Appeal No. 1997-2188
Application 08/137,440
antihistamines and, yet, still have the underlying allergy.
Appellants' specification describes how to synthesize the
claimed galanthamine compounds (see page 4, line 14 through
page 7, line 3 of the specification), including twenty-one
examples of the synthesis of compounds within the claims
(pages 10 through 29 of the specification). Appellants
disclose how the claimed compounds may be administered, what
constitutes effective quantities for administration and the
form in which the compounds may be administered (page 8, line
27 through page 10, line 3 of the specification). Possessed
of this disclosure, we have no doubt but that the skilled
routineer would be able to prepare and use the claimed
compounds in the manner disclosed above.
The examiner's criticism of the claims as set forth in
the statement of his rationale for rejecting the claims
appears to be an expression of his concern that the claimed
compounds and method of using the same may not be efficacious
or even work at all. While the examiner's concern is laudable,
it is misplaced here. As the court observed in In re Brana, 51
F.3d 1560, 1567, 34 USPQ2d 1436, 1442 (Fed. Cir. 1995):
The Commissioner, as did the Board, confuses the
requirements under the law for obtaining a patent with
the requirements for obtaining government approval to
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