Ex parte OLLMANN JR.

Board of Patent Appeals and Interferences

Feb 11, 1998

07851517 (B.P.A.I. Feb. 11, 1998)

Application for patent filed March 16, 1992.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICHARD R. OLLMANN JR.
__________
Appeal No. 95-0266
Application 07/851,5171
__________
ON BRIEF
__________
Before JOHN D. SMITH, GARRIS and WEIFFENBACH, Administrative
Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1, 6, 10 and 11. The only other claims in the
application, which are claims 2 through 5, 7 through 9, and 12,
stand withdrawn from further consideration by the examiner as
being directed to nonelected inventions.
Appeal No. 95-0266
Application 07/851,517
2
The subject matter on appeal relates to a class of compounds
which are precursors of rigidified dyes. This appealed subject
matter is adequately illustrated by independent claim 1, a copy
of which taken from the appellant’s brief is appended to this
decision.
No prior art has been relied upon by the examiner in the
sole rejection before us on this appeal.
The appealed claims stand rejected under the first paragraph
of 35 U.S.C. § 112 as being based upon a disclosure which would
not enable one having ordinary skill in the art to make the here
claimed compounds. On page 3 of the answer, the examiner
expresses his position as follows:
Save for specific Examples 3-7, there is no indication
as to how the myriad of compounds claimed are to be
made. Additionally, there is no indication at all for
the source of the necessary starting materials needed
to make the myriad of compounds claimed (particularly
the various compounds as are identified by variables
R , R , and R taken together with another variable).1 5 4
We cannot sustain this rejection.
As correctly argued by the appellant, the PTO’s burden of
proof in questioning the enablement of an applicant’s disclosure
requires that the PTO advance acceptable reasoning inconsistent
with enablement. In re Strahilevitz, 668 F.2d 1229, 1232, 212
USPQ 561, 563 (CCPA 1982). In this case, the examiner has
Appeal No. 95-0266
Application 07/851,517
3
proffered no evidence or reasoning adequate to support his doubt
that one having ordinary skill in this art would not be capable
of purchasing or synthesizing the starting materials needed to
form the here claimed precursors, including those having the R ,1
R and R substituents, defined by appealed claim 1. It follows4 5
that, on the record before us, there is no reason to doubt the
objective truth of the statements contained in the appellant’s
specification disclosure which must be relied on for enabling
support of the here claimed invention. In re Marzocchi, 439 F.2d
220, 223, 169 USPQ 367, 369 (CCPA 1971).
Appeal No. 95-0266
Application 07/851,517
4
In light of the foregoing, the examiner’s decision to reject
claims 1, 6, 10 and 11 under the first paragraph of 35 U.S.C.
§ 112 is reversed.
REVERSED
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CAMERON WEIFFENBACH )
Administrative Patent Judge)
Appeal No. 95-0266
Application 07/851,517
5
Mark A. Litman
3M Office of Intellectual Property Counsel
P.O. Box 33427
St. Paul, MN 55133-3427
Appeal No. 95-0266
Application 07/851,517
6
APPENDIX
1. A compound of the formula:
wherein R represents an alkyl, aryl, sulfoalkyl,1
carboxyalkyl, sulfatoalkyl, alkoxyalkyl, acyloxyalkyl,
dialkylaminoalkylene, cycloaminoalkylene, acyl, or alkenyl group
having up to 18 carbon atoms; R represents an alkyl group having2
from 1 to 18 carbon atoms; R represents hydrogen or an alkyl3
group having from 1 to 18 carbon atoms; R represents hydrogen or4
an alkyl group having from 1 to 18 carbon atoms; R represents5
hydrogen, nitro, carboxyl, sulfo, hydroxy, halogen, phospho, or
an alkoxy, thioalkoxy, oxyalkyl, acyl, alkyl, aryl, or amino
group having up to 18 carbon atoms; wherein any two groups R , or5
R and a group R , or R and R may together form a substituted or4 5 1 4
unsubstituted aryl, heteroaryl, aliphatic, or heteroaliphatic
ring; X represents any non-interfering anion; and a and b
represent positive integers such that a equals b.