Ex Parte Langston et al - Page 5



                Appeal No. 2006-0881                                                                                                          
                Application No. 09/928,139                                                                                                    

                appealed claim 1 was expressly recited in original claim 1 filed with the subject specification,                              
                and therefore the appellants’ original disclosure would have conveyed with reasonable clarity to                              
                those skilled in the art that the appellants had possession on the application filing date of the                             
                subject matter in question.  See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d                                   
                1111, 1116-17 (Fed. Cir. 1991).  Also see MPEP § 2163 et. seq.                                                                
                         The examiner’s enablement position also is not well-taken.  For example, the disclosure                              
                on specification page 4 unquestionably enables the claim 1 process with respect to d-threo-                                   
                methylphenidate.  Moreover, as correctly indicated by the appellants, this claimed process is                                 
                presumptively considered to be enabled with respect to l-threo-methylphenidate, and it is the                                 
                examiner’s initial burden to establish a reasonable basis to question enablement.   See In re                                 
                Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).  Also see MPEP § 2164                                     
                et. seq.  On the record of this appeal, the examiner has failed to provide a reasonable explanation                           
                as to why the scope of protection provided by claim 1 is not adequately enabled by the                                        
                appellants’ disclosure.  Id.                                                                                                  
                         For the above stated reasons, we cannot sustain the examiner’s § 112, first paragraph,                               
                rejection of claim 1.                                                                                                         
                         Regarding her § 103 rejection of claims 1-6 and 8, the examiner finds that “Zeitline [sic]                           
                or Armstrong disclosed all the elements of the claims except wherein a recycled by racemization                               
                step was not included” but concludes “[i]t would have been prima facie obvious to employ a                                    
                conventional modification of recycle/racemization step [i.e., see the Miller Chemical Abstracts,                              
                the Barry Chemical Abstracts or Miller ‘261] for the conventional process of Zeitline [sic] or                                




                                                                      5                                                                       



Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007