Appeal No. 2006-1226 Page 7
Application No. 10/272,382
se, and therefore are anticipated by a prior art disclosure of any amount of the claimed
complex. See, e.g., SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1335,
74 USPQ2d 1398, 1403 (Fed. Cir. 2005) (claim to “[c]rystalline paroxetine hydrochloride
hemihydrate” not limited to commercially significant amounts).
Appellants have not, for example, provided declaratory evidence to show that it
would have required undue experimentation to make a 1:1 neutral complex of glutamate
and zinc or copper. Appellants have not shown that special conditions are required to
cause zinc or copper and glutamate in aqueous solution to form a 1:1 neutral complex,
nor have they shown that a skilled artisan who followed the Gramaccioli guidance would
not have produced such a complex. While Appellants have pointed out the lack of
detailed experimental protocols in the Gramaccioli references, they have not provided
evidence to show that the lack of detail renders the references nonenabling.
For the same reason, we find unpersuasive Appellants’ argument that the
Gramaccioli references do not anticipate because “the author[s] did not provide any
independent evidence of the identity of the crystals or structure such as chemical or
elemental analysis or spectroscopic analysis.” Appeal Brief, page 7; Abdel-Monem
declaration, ¶ 7. A prior art reference is presumed to be enabling, and the burden is on
the party challenging enablement to prove it – in this context, by a preponderance of the
evidence. See Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355, 65
USPQ2d 1385, 1416 (Fed. Cir. 2003). The holding in Amgen was limited to prior art
patents, but the court noted that its holding, “by logical extension,” should apply to
nonpatent prior art as well. Id. at 1355 n.22, 65 USPQ2d at 1416 n.22. Appellants have
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