Appeal No. 1996-2042
Application No. 08/086,602
pesticides of outstanding activity. See the brief at page 3
and the specification at page 1, lines 2 and 3; page 11, line
13 to page 12, line 2; page 20, lines 3-8; and page 26, line 8
to page 27, line 3.
The examiner’s anticipation rejection is predicated on
his factual determination that the claimed “4-bromo” compound
is one of only twenty eight possible compounds covered by
generic formula I disclosed at page 3 of Kohl. See the answer
at pages 4 and 5 and the supplemental answer at pages 1 and 2.
Thus, the examiner, in effect, contends that because the
number of compounds covered by formula I of the reference “is
quite limited”, Kohl provides a description of each of the
twenty eight compounds “just as surely as if they were
identified in the reference by name”. See In re Schaumann,
572 F.2d 312, 316, 197 USPQ 5, 9 (CCPA 1978).
On the other hand, appellants correctly point that the
examiner’s determination that formula I of Kohl covers only
twenty eight compounds is erroneously based on the assumption
that the fourteen possible R substituents of the formula I1
compounds are described as only single substituents on two
possible ring positions. Our translation of Kohl confirms
3
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