Appeal No. 2001-1947
Application 08/333,202
opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal
conclusion is not entitled to any weight, the underlying basis for the opinion may be
persuasive. In re Chilowsky, 306 F.2d 908, 134 USPQ 515 (CCPA 1962).
In addition, although an affiant’s or declarant’s opinion on the ultimate legal issue
is not evidence in the case, “some weight ought to be given to a persuasively supported
statement of one skilled in the art on what was not obvious to him.” In re Lindell, 385
F.2d 453, 456, 155 USPQ 521, 524 (CCPA 1967). The weight attached to evidence of
secondary considerations depends upon its relevance to the issue of obviousness and
the amount and nature of the evidence.
We are persuaded by the argument and evidence presented by appellants.
Appellants have previously argued that both Friedmann and Merck fail to disclose an
enabling process for obtaining a substantially pure composition and thus the rejections
of the claims under 35 U.S.C. §§ 102 and 103 are improper, citing In re Hoeksema.6
Paper No. 12, page 3. We agree. In our view, appellants have provided sufficient
evidence to support the position that the prior art products and methods of making
diacetylrhein are not, and do not enable a method of making a compound having the
6 In re Hoeksema, 399 F.2d 269, 274, 158 USPQ 596, 601 (CCPA 1968)
[References relied upon to support a rejection under 35 U.S.C. § 103 must provide an
enabling disclosure, i.e., they must place the claimed invention in the possession of the
public.] See also In re Payne, 606 F.2d 303, 314, 203 USPQ 245, 255 (CCPA 1979);
In re Brown, 329 F.2d 1006, 1011, 141 USPQ 245, 249 (CCPA 1964). An invention is
not “possessed” absent some known or obvious way to make it.
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