Appeal No. 1998-2587
Application No. 08/451,993
insoluble, and therefore unsuitable for use in a pharmaceutical composition.
Likewise, those skilled in the art would certainly be aware that t-butyl groups are
bulky substituents and therefore likely to present steric hindrance problems if
situated on adjacent carbon atoms. Finally, we note that the specification
provides fifty working examples of various camptothecin derivatives. In this case
all these factors weigh in favor of enablement. The examiner does not address
these factors, focusing only on the unpredictability and potential inoperability of
certain embodiments encompassed by the claims.
Having considered the record as a whole, we conclude that the examiner’s
position is not supported by a preponderance of the evidence. We therefore
reverse the rejection for non-enablement.
2. The rejections for anticipation.
The examiner rejected all of the claims as anticipated by Terasawa EP
and rejected claims 1, 14-20, 25, 28, 37, and 38 as anticipated by Mitsui.
Appellants do not dispute that both Terasawa EP and Mitsui identically disclose
the compounds of the instant claims, but argue that neither reference is prior art.
According to Appellants, the instant application is a continuation of application
08/112,230, filed August 27, 1993, which was a continuation of 07/820,232, filed
January 14, 1992.
The examiner argues that Appellants are not entitled to claim an earlier
filing date under 35 U.S.C. § 120 because the earlier-filed applications did not
enable the instant claims, for the same reasons the instant application does not
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