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
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