Appeal No. 2003-2146 Page 7
Application No. 09/546,143
understand what is claimed. Accordingly, we reverse the rejection of claims 12,
14, 15, 17, 19, 21, 23 and 25 under 35 U.S.C. § 112, second paragraph.
THE REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH:
While the examiner finds (Answer, page 5), appellants’ disclosure enabling
for the amino protecting group (R4), “as a tert-butyl ester, tert-butyl carboxylate,
or tert-butoxycarbonyl”, the examiner finds (id.), “[t]he disclosure does not
provide guidance as to what functional groups, and/or rings can be considered as
an amino protecting group.” Accordingly, the examiner concludes (id.), “one
skilled in the art will have to carry out undue experimentation, as the chemical art
is unpredictable.”
In response, appellants argue (Brief, page 7), “[i]t is not necessary for an
[a]pplicant to teach in the specification what is well-known in the art, and amino-
protecting groups are well-known in the art.” In support of this argument
appellants rely on In re Fuetterer, 319 F.2d 259, 138 USPQ 217 (CCPA 1963), In
re Robins, 429 F.2d 452, 166 USPQ 552 (CCPA 1970), In re Bowen, 492 F.2d
859, 181 USPQ 48 (CCPA 1974), and In re Skoll, 523 F.2d 1392, 187 USPQ 481
(CCPA 1975). However, according to the examiner (Answer, page 8), the “[c]ase
laws [sic] cited by applicant are outdated. The most recent case law is
(Genentech Inc. v. Novo Nordisk, 108 F.3d 1361, 42 USPQ 2d [sic] 1001 (Fed.
Cir 1997)), in which the court ruled that relying on the knowledge of one skilled in
the art cannot cure the deficiency in enablement.” In this regard, the examiner
asserts (id.), “[j]ust because a term is well-known in the art, it does not mean one
skilled in the art can prepare any intermediate having any ‘amino protecting
group’.” We will discuss each of the examiner’s assertions in turn.
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