Appeal No. 1998-0653 10
Application No. 08/282,278
On the facts and arguments presented by the examiner in this case, the burden of proof
is on the examiner to show that substituted lithium acetylide compounds cannot replace
the unsubstituted hydrogen on the acetylide corresponding to R4 on the naphthopyran
with a different moiety, or in the alternative, if a different moiety is placed on the lithium
acetylide, it could not react to form the requisite naphthopyran compound of the claimed
subject matter having a substituent other than hydrogen on the R4 position. This burden
of proof has not been met. We find that the examiner’s statement, Answer, page 12, is
merely speculative and does not rise to the requisite level of evidence required to
establish a prima facie case of lack of lack of enablement.
Based upon the above findings and analysis the rejection by the examiner under
35 U.S.C. § 112 is not sustained.
DECISION
The rejection of claims 1 through 7 and 41 under 35 U.S.C. § 112, first and
second paragraphs as the claimed invention is not described in such full, clear, concise,
and exact terms to enable any person skilled in the art to make and use the same, and/or
for failing to particularly point out and distinctly claim the subject matter which appellants
regard as the invention is reversed.
The rejection of claims 1 through 7 under 35 U.S.C. § 112, second paragraph for
failing to particularly point out and distinctly claim the subject matter which appellants
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