Appeal No. 1998-2010
Application No. 08/542,861
means by which they may be prepared for the plethora of functional groups permitted in R3,
R4, R7, R7', R33-34 which include hetero rings at many locations and cycloalkyl rings
interspersed in the basic framework. Answer, page 6. The examiner further argues that
the specification is particularly silent with regard to the availability of necessary starting
materials such as the amine on page 30, the sulfamoyl halides on page 31, as well as the
succinic acid derivatives on page 33. Id.
With respect to the how to make aspect of the rejection, we find the examiner has
failed to establish a prima facie case of lack of enablement with proper argument and/or
evidence. The examiner's position is the specification is silent as to the availability of all
necessary starting materials such as the amino on page 30, the sulfamoyl halides on page
31, as well as the succinic acid derivatives on page 33.
We find the examiner's position to be without basis. First, the examiner argues
there is no support in the specification as to how to make the amine mentioned on page
30. The amine is of the formula, R3NH2. The specification, page 30, lines 21-23 indicates
that exemplary amines include benzyl amine, isobutyl amine, n-butyl amine, isopentyl
amine, isoamylamine, cyclohexanemethyl amine, naphthyl methyl amine. Appellants
further indicate that such amines are readily available from Aldrich Chemical Company or
Fluka Chemical Company. Reply Brief, page 11. The examiner has failed to rebut this
argument of appellants. In addition, the specification page 32, lines 11-24, page 47,
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