Appeal No. 2003-1716 Page 5
Application No. 09/946,205
publication shall have actually been made in order to satisfy the
enablement requirement. [footnote and case citations omitted]
We also invite attention to the following passage in In re LeGrice, 301 F.2d 929, 936,
133 USPQ 365, 372 (CCPA 1962):
We think it is sound law . . . that before any publication can amount to a
statutory bar to the grant of a patent, its disclosure must be such that a
skilled artisan could take its teachings in combination with his own
knowledge of the particular art and be in possession of the invention.
According to applicant, Lukas-Laskey does not sufficiently describe the tablet recited in
claim 1 "to have placed the public in possession of it." We disagree.
Applicant's position to the contrary, notwithstanding, we find that Lukas-Laskey
imparts ample knowledge to persons skilled in the art instructing them how to prepare a
tablet comprising (i) carvedilol or a pharmaceutically acceptable salt thereof, (ii)
hydrochlorothiazide or a pharmaceutically acceptable salt thereof, and (iii) at least one
pharmaceutically acceptable additive, e.g., a solid carrier such as lactose or
magnesium stearate. Note particularly the passages in Lukas-Laskey referenced by
the examiner at page 6, line 27 through page 7, line 29.
In support of his argument that Lukas-Laskey constitutes a non-enabling
reference, applicant refers to the following passages in the specification, page 2, lines
13 through 27:
The combination of a $-blocker with a diuretic has been used
successfully for treating cardiac and circulatory disorders such as
hypertension, angina pectoris, cardiac insufficiency and illnesses
associated therewith. Many studies have investigated the advantages of
combination therapy using carvedilol and hydrochlorothiazide (e.g.
Widmann et al., 1990, Eur J Clin Pharmacol 38 (2):143-146; van der Does
et al., 1990, Eur J Clin Pharmacol 38 (2): 147-152; McTavish et al., 1993,
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