Appeal 2007-0650
Application 10/808,264
easily prepared by an Ullman ether synthesis” (Keller, col. 3, l. 68 to
col. 4, l. 1), and this provides evidence that those of ordinary skill in
the art would have understood how to adapt an Ullman ether synthesis
method to obtain the desired diols. Keller states that Williams and
Hammann “discuss” Ullman ether synthesis. This language provided
evidence that this “discussion” would have provided enough guidance
to the skilled artisan to allow synthesis of all of the diols of Keller.
That Keller, Williams, and Hammann do not expressly disclose
forming x=7 or above diols, does not show that one of ordinary skill
in the art would not understand how to adapt the Ullman ether
synthesis method to form the higher repeating unit diols. An express
articulation of such knowledge in the references is not required where
it is evident that those of ordinary skill in the art possessed the
knowledge. See Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d
1461, 1472, 43 USPQ2d 1481, 1489 (Fed. Cir. 1997) and cases cited
therein. Moreover, it is not necessary “that an invention disclosed in a
publication shall have actually been made in order to satisfy the
enablement requirement.” In re Donohue, 766 F.2d 531, 533, 226
USPQ 619, 621 (Fed. Cir. 1985).
Appellants also rely upon the Keller Declaration in support of
their contention of non-enablement (Br. 3-4). According to the
Declaration, “[t]he Ullmann ether synthesis referred to in the Keller
reference (US Patent No. 4,259,471) cannot be used to make
oligomeric or polymeric aryl ethers in high yield and high molecular
weight.” (Declaration ¶ 3 (emphasis added)). Enablement does not
require synthesis in high yield, only the ability to synthesize.
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