Appeal No. 2003-2146 Page 13
Application No. 09/546,143
Accordingly, as appellants point out (Brief, page 8), despite the examiner’s
assertions to the contrary, the trans confirmation of a molecule, as set forth in
compound 13 of Krogsgaard-Larsen, cannot anticipate a specific enantiomeric
form of the cis conformation of a molecule as set forth in appellants’ claimed
invention.
Compound 12
As the examiner recognizes (Brief, page 10, emphasis removed), “[t]he
symbol, ‘(±)’ [as it appears in the illustration of compound 12 of Krogsgaard-
Larsen], refers to optical isomers of the cis-compound.” Stated differently,
compound 12 of Krogsgaard-Larsen refers to a racemic mixture containing both
the “+” and the “–” enantiomers of the cis configuration of compound 12. As
appellants point out (Brief, page 9), “claim 17 excludes the racemic mixture
disclosed [by Krogsgaard-Larsen] as compound 12.” In this regard, we remind
the examiner, as set forth in Akzo N.V., Aramide Maatschappij v.o.f. v. United
States Int’l Trade Comm’n, 808 F.2d 1471, 1479, 1 USPQ2d 1241, 1245 (Fed.
Cir. 1986), “[i]n addition to identity of invention, anticipation requires that a prior
art reference must be enabling, thus placing the allegedly disclosed matter in the
possession of the public.” Here the examiner fails to explain how the racemic
mixture of compound 12 taught by Krogsgaard-Larsen provides an enabling
disclosure of the specific enantiomer set forth in appellants’ claimed invention.
See In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978), citing In
re Williams, 171 F.2d 319, 80 USPQ 150 (1948), “the novelty of an optical isomer
is not negated by the prior art disclosure of its racemate.”
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