Appeal No. 2000-0600 Page 8
Application No. 08/642,268
Having determined that the examiner has not met her burden of established
a prima facie case of non-enablement, we find it unnecessary to discuss the Melzer
Declaration, relied on by appellants to rebut any such prima facie case.
Accordingly, we reverse the rejection of claims 7-11 and 18-19 under
35 U.S.C. § 112, first paragraph.
THE REJECTIONS UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
The legal standard for indefiniteness under 35 U.S.C § 112, second
paragraph, is whether a claim reasonable apprises those of skill in the art of its
scope. See, Amgen Inc. v. Chugai Pharmaceutical Co., Ltd. 927 F.2d 1200, 1217,
18 USPQ2d 1016, 1030 (Fed. Cir. 1991).
Claims 1, 2, 5-11, and 13-19:
According to the examiner (Answer, page 3) the “[s]cope of ‘solvates’ as
recited in … [the] claims is unknown.” The examiner finds (id.) “[g]enerally not all
solvents can form solvates with all compounds … [and] it is not routine for any and
every type of solvent for form solvate(s) with specific compounds.” According to the
examiner (Answer, page 4) “[i]n the absence of any guidance in the specification …
or in any relevant prior art,[ ]one cannot readily determine what is and what is not
within the instant scope of solvates.”
In response, appellants argue (Brief, page 3) “[t]hat all solvents cannot form
solvates with all compounds is not seen to be relevant herein. The relevant inquiry is
whether it would be known to one of ordinary skill in the art what solvents form
physiologically acceptable solvates with the compounds of formula I.” In this regard,
appellants argue (Brief, page 4), with reference to Hybritech Inc. v. Monoclonal
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