Ex parte POURRAT et al. - Page 3





                 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).                                                                  
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