## Facts

- Carlos Samour appealed the rejection of claims in a patent application directed to substituted phenobarbital compounds and compositions.
- The appealed claims covered, among other subject matter, the compound 1,3-dimethoxymethyl-5-ethyl-5-phenyl barbituric acid (1,3-dimethoxymethyl phenobarbital).
- A printed publication (Doran) disclosed the complete structural formula of that compound but did not describe a specific method of making it.
- The examiner rejected claims 1, 3, and 4 as anticipated under 35 U.S.C. § 102(b), treating Doran as disclosing every element of the claimed compound by structure.
- To address the lack of a preparation method in Doran, the examiner relied on a separate patent (Henze) and related evidence to show that a person skilled in the art could make the disclosed compound using known synthetic techniques for phenobarbital derivatives.
- The Board of Appeals affirmed the § 102(b) rejection, and Samour appealed to the Court of Customs and Patent Appeals.

## Issues

1. Whether a printed publication that discloses only the structural formula of a claimed chemical compound anticipates under 35 U.S.C. § 102(b) when enablement is shown by other references or evidence.
2. Whether the PTO may rely on an additional reference to demonstrate that the primary reference’s disclosure is enabling, without improperly using multiple references to supply elements of the claimed invention for anticipation.

## Decision

- The court affirmed the Board’s decision sustaining the § 102(b) anticipation rejection.
- The court held that Doran’s disclosure of the compound’s complete structure was an identical disclosure of the claimed subject matter.
- The court held that, although Doran did not include a synthesis, the PTO could rely on Henze and other evidence to show that Doran’s disclosure was enabling (i.e., that the compound was makeable by those skilled in the art).
- The court rejected the argument that anticipation required the primary reference itself to contain the method of making when the claimed composition was fully identified by the primary reference.

## Legal Principles

- A claim is anticipated under 35 U.S.C. § 102(b) when a single prior-art reference discloses the identical claimed subject matter.
- For chemical compounds, disclosure of the complete structural formula can be sufficient to disclose the claimed subject matter for anticipation purposes.
- A prior-art reference used for anticipation must be enabling, but enablement of the primary reference may be shown using additional references or extrinsic evidence when the primary reference itself identically discloses the claimed invention.
- Using additional material to prove enablement differs from impermissibly combining multiple references to assemble missing claim elements; the latter is an obviousness-type approach, not anticipation.

## Conclusion

The court sustained the PTO’s § 102(b) rejection because the claimed compound was identically disclosed by structure in a printed publication, and the PTO permissibly used another reference and evidence to show that the publication’s disclosure was enabling to skilled artisans at the relevant time.


Application of Samour, 571 F.2d 559 (C.C.P.A. 1978)