Appeal No. 2002-0798 Page 5
Application No. 09/107,688
skill to applicants' claimed method including the step of "transforming said scaffold
moiety in said reaction products" (claims 13 and 29, emphasis added) or "transforming
the scaffold moiety portion of said reaction products" (claim 30, emphasis added).
The rejection of claims 13 and 23 through 26 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Rutter, Baindur, and Ostresh is
reversed; and the rejection of claims 13, 23, 26, and 30 under 35 U.S.C. § 103(a) as
unpatentable over the combined disclosures of Rutter and Joran is reversed.
Section 112
In Paper No. 16, pages 5 through 9, the examiner sets forth a rejection couched
in terms of the enablement requirement of 35 U.S.C. § 112, first paragraph. According
to the examiner, applicants' specification, "while being enabled for a method for
producing piperazine libraries . . . does not reasonably provide an adequate description
to enable (make and use) the presently claimed method for the scope of library
compounds encompassed by claims 13, 23-26 and 29-30" (id., page 5, lines 3-7).
However, in an effort to support this rejection, the examiner weaves in concepts which
would normally or properly be applicable in entering rejections under 35 U.S.C. § 112,
second paragraph, or 35 U.S.C. § 101.
For example, the examiner argues that:
The claimed invention methods contain no chemical structure
(reactants or final product) and recite vague conclusory steps (e.g.
transforming) without any indication regarding the means (e.g. reagents)
necessary to achieve these steps. For example, the claim recites
"reacting" and "transforming" steps that are merely conclusory in nature;
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