Appeal No. 2003-1722 Page 5
Application No. 09/041,343
case is not one, like Lilly, in which a chemical compound was defined by its
function rather than its structure.
2. Enablement
The examiner also rejected claims 112, 117, and 125 for nonenablement.
The examiner acknowledged that the claims were enabled for “synthetic
receptors with diaminoazepine (6 member ring with Nitrogen heterocycle) or
diaminopyrrolidine (5 member ring with Nitrogen heterocycle) as templates.”
Examiner’s Answer, page 5.1 The examiner nonetheless rejected the claims as
broader than the enabling disclosure, on the basis that the specification “does not
reasonably provide enablement for synthetic receptors with templates which are
monocyclic heterocycles with more than 6 member ring and presence of other
heterocycle atoms such as Oxygen or sulfur in addition to Nitrogen.” Id.
The examiner apparently concluded that the specification was deficient in
teaching those skilled in the art both how to make and how to use the claimed
products. The examiner’s conclusion that the specification does not teach how to
make the claimed library relied heavily on the proposition that the claims “contain
no specific chemical structure of the templates.” Examiner’s Answer, page 5. In
addition, the examiner concluded that, even assuming “that one could make
synthetic receptors, . . . as encompassed by the present claims, the specification
1 The examiner’s citation of “diaminoazepine (6 member ring with Nitrogen heterocycle)” as one
enabled species leaves the precise scope of enablement conceded somewhat unclear.
Diaminoazepine, of course, has a 7-membered heterocyclic ring; the corresponding heterocycle
with a 6-membered ring is diaminopiperidine. For the reasons discussed infra, however, the
issue is moot.
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