Appeal No. 1998-1488
Application No. 08/100,907
scope of enablement. Only when the PTO meets this burden, does the burden shift to
applicants to provide suitable evidence indicating that the specification is enabling in a
manner commensurate in scope with the protection sought by the claims. In re Marzocchi,
439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971).
On the record before us, there appears to be no dispute that the disclosure in
support of the claimed invention provides sufficient information to permit those skilled in
this art to carry out or practice the claimed process without undue experimentation.
Further, the examiner does not dispute that both of the enantiomeric forms of 9-OH-
risperidone, resulting from the claimed process, are active and useful as pharmaceutical
agents in the treatment of psychotic diseases in the manner described in the specification.
However, the examiner questions whether the process of isolating the enantiomeric forms
of 9-OH-risperidone has any usefulness. It would appear that the examiner is not
questioning whether one could practice the invention as claimed, but is questioning the
lack of disclosure as to why one should use the claimed process to arrive at the
enantiomeric forms of 9-OH-risperidone. The examiner cites no authority to support the
reliance on this proposition as a basis for refusing patentability of a claimed process under
35 U.S.C. § 112, first paragraph.
Thus, we agree with appellants that the disclosure presented in support of the
claimed invention is sufficient to comply with the requirements of both 35 U.S.C. § 101 and
35 U.S.C. § 112, first paragraph. (Brief, pages 6 and 8). Therefore, it is our opinion that
the examiner has failed to provide a reasonable basis for questioning the sufficiency of the
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