Appeal 2007-1348
Application 10/650,253
1 A claimed invention is patentable if the subject matter of the claimed
2 invention would not have been obvious to a person having ordinary skill in
3 the art. 35 U.S.C. § 103(a); Graham v. John Deere Co. of Kansas City, 383
4 U.S. 1 (1966).
5 Facts relevant to a determination of obviousness include (1) the scope
6 and content of the prior art, (2) any differences between the claimed
7 invention and the prior art, (3) the level of skill in the art and (4) any
8 relevant objective evidence of obviousness or non-obviousness. Graham,
9 383 U.S. at 17-18.
10
11 F. Discussion
12 Lack of enablement and anticipation based on Bright
13 In this particular appeal, the lack of enablement rejection and the
14 anticipation rejection based on Bright may be considered together.
15 Resolution of both rejections turns on a proper interpretation of
16 claim 125.
17 The Examiner determined that there was a lack of enablement and an
18 anticipation by Bright based on her finding that a crystalline compound
19 cannot maintain its crystalline structure in an aqueous media. Examiner’s
20 Answer, page 3.
21 The Examiner also determined that appellants’ “carrier” or “diluent”
22 could be “sterile aqueous media.” Examiner’s Answer, page 3.
23 Since a crystalline compound cannot maintain its crystalline structure
24 in water, the Examiner reasoned that appellants’ disclosure is insufficient to
25 enable one to make a combination of substantially pure Form F and water
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