Appeal No. 1997-2385
Application No. 08/271,571
recovering at least 90% of the therapeutic active ingredients
contained in the plants at the time of harvest.
The references relied upon by the examiner are
Sugisawa et al. (Sugisawa) 4,520,574 Jun. 4, 1985
Palmer 4,681,770 Jul. 21, 1987
Lioutas 4,832,969 May 23, 1989
Grounds of Rejection
Claims 30 through 34 stand rejected under 35 U.S.C. § 112, first paragraph, as
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being nonenabled by the specification. Claims 30 through 34 stand rejected under 35
U.S.C. § 112, second paragraph, as indefinite. Claims 30 through 34 stand rejected under
35 U.S.C. § 103 as being obvious over Palmer, Sugisawa or Lioutas in view of appellants'
admissions on page 1, lines 25-28 of the specification.5
We REVERSE all the above grounds of rejection.
1. Rejection of claims 30-34 under § 112, first paragraph, lack of enablement
4Although the examiner referred to claim 30 in his objection to the specification under 35 U.S.C.
§ 112, first paragraph, in the Office action mailed May 2, 1995 (Paper No. 33, p. 2), no claims were
correspondingly finally rejected under § 112, first paragraph, for lack of enablement. Therefore, while the
record indicates the examiner's apparent intention to reject at least claim 30 for lack of enablement,
technically the rejection of claims 30-34 under § 112, first paragraph, in the Answer (Paper No. 42, filed July
10, 1996, p. 6) may be considered a new ground of rejection. However, appellants have argued this
rejection in their Reply Brief (Paper No. 44, filed July 29, 1996, pp. 1-2). Therefore, under these
circumstances and in view of the length of time this appeal has been pending, we will review the rejection of
claims 30-34 under § 112, first paragraph, for lack of enablement at this time.
5This is a different statement of rejection than previously made, i.e., the examiner finally rejected
claims 30-34 under § 103 as being unpatentable over Palmer or Sugisawa in view of Lioutas and
admissions in the specification (emphasis added, Paper No. 33, p. 4).
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