Appeal No. 2006-0881
Application No. 09/928,139
Rather than reiterate the respective positions advocated by the appellants and by the
examiner concerning the above-noted rejections, we refer to the supplemental brief and reply
brief as well as to the answer for a complete exposition thereof.
OPINION
For the reasons which follow, we cannot sustain any of the rejections advanced on this
appeal.
Concerning her § 112 rejection of claim 1, the examiner states that “[t]he [claim 1]
limitation of producing all four isomer[s] from the d- or l-threo finds no antecedent basis or
enablement” (answer, page 6). Like the appellants, we find the examiner’s exposition of this
rejection to be less than a model of clarity with respect to why she considers claim 1 (but not the
dependent claims) to violate the description and enablement requirements of § 112, first
paragraph. The reasons for this lack of clarity are several. For example, the examiner’s position
is obfuscated by her comparison of appealed claim 1 with the disclosures of appellants’ foreign
priority documents. These foreign priority disclosures relate to § 119 benefits, not to the
description and enablement issues raised by the rejection under review. In any event, for
purposes of resolving these issues, we will consider this rejection to be founded upon the
examiner’s above-quoted criticism concerning the “limitation” of appealed claim 1.
There is no merit in the examiner’s belief that the appellants’ original disclosure of this
application fails to contain written description of the claim 1 process for obtaining single
enantiomer d-threo methylphenidate or l-threo-methylphenidate which comprises racemization
of the unwanted enantiomer to give a mixture of all four stereoisomers. This subject matter of
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