Appeal No. 1998-2010
Application No. 08/542,861
of a similar class to the claimed compounds in a manner which would support enablement
of the full scope of the pending claims (Answer, page 5).
After evidence or arguments are submitted by the appellants in response to a
rejection based on lack of enablement, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration to persuasiveness of the
argument. We have carefully studied the arguments and evidence of record. On balance,
we believe that the totality of the evidence presented by the examiner and appellants
weighs in favor of finding the claimed invention lacks enablement and would require undue
experimentation to practice the claimed invention within the full scope of the claims. The
rejection of the claims under 35 U.S.C. § 112, first paragraph is affirmed.
Improper Markush Group
Claims 1, 5, 7-11, and 17-25 stand rejected under the judicial doctrine of being
drawn to an improper Markush group. As the rejection of all the claims under 35 U.S.C. §
112, first paragraph has been affirmed and disposes of all the claims on appeal, it is not
necessary for us to reach, and we have not considered and do not reach the rejection
based on an improper Markush group.
Other Issue
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