Appeal 2007-0650
Application 10/808,264
We cannot say that Appellants have provided sufficient
evidence and/or reasoning to support a determination that those of
ordinary skill in the art would not have been able to synthesize the
x = 7, 8, 9, or 10 aromatic diols of Keller. Looking at the issue
through the facts of the cases that have construed “possession” in the
context of what is enabling, we note that prior art references were
found to be non-enabled when there was a complete absence of a
known or obvious method of making the product in a stable form. See
In re Brown, 329 F.2d 1006, 1011, 141 USPQ 245, 249 (CCPA 1964)
(“[W]e do not think that Clark's reference to his unsuccessful attempts
to prepare fluorine-containing silicone homopolymers would place
such homopolymers in the possession of the public” (emphasis
added)); In re Sheppard, 339 F.2d 238, 241-42, 144 USPQ 42, 45
(CCPA 1964) (“Emelus indicates a complete lack of success in
preparation of pentafluorides” in a stable form (emphasis added)); In
re Hoeksema, 399 F.2d 269, 274, 158 USPQ 596, 601 (CCPA 1968)
(“[T]he absence of a known or obvious process for making the
claimed compounds overcomes a presumption that the compounds are
obvious.” (emphasis added)); In re Collins, 462 F.2d 538, 542-43, 174
USPQ 333, 337 (CCPA 1972) (“[T]he lack of a teaching in Collins of
how to make the presently claimed heat exchangers vitiates the
rejection unless there was some known or obvious way to make
them.” (emphasis added)).
Appellants present no convincing evidence that those of
ordinary skill in the art at the time of the invention would be unable to
make the diols at issue. Keller states that the aromatic diols “are
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