Appeal No. 1998-1488
Application No. 08/100,907
The examiner has relied on no references in rejecting the claimed subject matter.
Ground of Rejection
Claims 20, 22, 23, and 26 - 28 stand rejected under 35 U.S.C. § 112, first
paragraph, as being based on a disclosure which fails to teach how to use.
We reverse.
Discussion
The rejection under 35 U.S.C. § 112, first paragraph
The claims on appeal are directed to a process of separating the enantiomeric
forms of the structurally defined 9-OH-risperidone. (Claim 20). The examiner urges that
“[t]he specification fails to teach how to use the process." (Answer, page 3). The
examiner states that "[i]t is entirely possible that there is some usefulness in separating the
(+) from the (-), and in separating the (-) from the (+), but the specification does not teach
what that usefulness is." (Id.) The examiner, further, states that it "is not necessarily enough
to show how the process itself is to be used." (Id.) The examiner states that no rejection is
made under 35 U.S.C. § 101. (Answer, page 4). Therefore, the issue raised by the appeal
is whether appellants' disclosure would have enabled one skilled in the art to make and
use the claimed invention throughout its scope without undue experimentation.
The Patent and Trademark Office (PTO) bears the initial burden of providing
reasons for doubting the objective truth of the statements made by applicants as to the
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