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 4 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). - 3 -Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 NextLast modified: November 3, 2007