Appeal No. 1999-0676
Application No. 08/465,625
Gibson’s disclosure in its entirety, but find no disclosure or suggestion of a process for
preparing the claimed compound having a primary carbon atom at position 25. Thus,
Gibson does not place the claimed invention in the possession of the public and, therefore,
does not constitute an enabling disclosure.
Additionally, we invite the examiner’s attention to the decision by another merits
panel of the Board in parent application 07/647,674, Appeal No. 93-1807 (Paper No. 35,
mailed March 20, 1997). There, the Board reversed a rejection of claims directed to the
method of making the instantly claimed compounds. That rejection was based on Gibson
et al., EP 0 214 731, published March 18, 1987. According to appellants,
EP 0 214 731 is “the counterpart of U.S. application Serial No. [06/]886,867, filed July 16,
1986” (specification, page 1, lines 22-24). U.S. Patent No. 5,089,480, the reference relied
on here, is a continuation-in-part of Application No. 06/886,867. Thus, the decision in
parent application 07/647,674 is consistent with our position that Gibson does not
constitute an enabling disclosure, i.e., does not put a person having ordinary skill in
possession of the claimed invention.
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