Appeal No. 1998-2587
Application No. 08/451,993
hexacyclic compounds which “have an excellent antitumor activity and a high
degree of safety, and are water-soluble.” Id., page 12.
Discussion
1. The non-enablement rejection.
The examiner rejected the all of the claims because, in his view, undue
experimentation would be required to practice the full scope of the claims. The
examiner argues, for example, that not all combinations of the R1, R2, and R4
groups encompassed by claim 1’s generic formula will have the appropriate
water solubility and lipophilicity to be pharmaceutically useful, and that the
specification does not enable those skilled in the art to use them in other ways,
e.g., as prodrugs. Examiner’s Answer, pages 7 -10, 12, 13-15. The examiner
also argues that starting materials are not available to make some of the
compounds that are encompassed by the generic formula (Answer, pages 10,
11-12, 13), and that claims 24 and 25 are not limited to “physiologically
acceptable” salts and therefore encompass toxic or insoluble salts of the recited
compounds, which the specification does not teach how to use (Answer, pages
10-11).
Appellants dispute the potential problems pointed to b y the examiner.
However, even assuming arguendo that all of the examiner’s critiques have
merit, we conclude that the examiner has not made out a prima facie case of
non-enablement.
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