Appeal No. 1998-1489
Application No. 08/449,224
the appellants, either in the specification or in the Appeal Brief, is that the “instant
specification contains no mention of the allegedly enabling Endo reference (which
appellants don’t allege describes the necessary intermediate for the X is O R4 carbonyl
compound)” (Examiner’s Answer, page 5).
The Endo reference was published in 1980, before the effective filing date of this
application. Again, this article was published in a recognized scientific journal and was
available and accessible to the public at the time the invention was made. It cannot be
gainsaid that it was not cited in the specification. However, it has long been settled that
“a patent need not teach, and preferably omits, what is well known in the art.”
Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94
(Fed Cir. 1986).
In light of the specification, considered in its entirety, and absent further evidence
or explanation by the examiner, we reverse the rejection of claims 1 through 9 and 22
under 35 U.S.C. § 112, first paragraph, based on the unavailability of requisite starting
materials.
CONCLUSION
The examiner’s decision, rejecting claims 1 through 9 and 22 under 35
U.S.C.§ 112, first and second paragraphs, is reversed.
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