Appeal No. 1998-0365
Application No. 08/501,336
art and the compounds instantly claimed is that of generic description.” According
to the examiner (Answer page 4) Barnes is relied upon to disclose “a few more of
[a]ppellants claimed substituents on pyrrole derivatives which have fungicidal
activity….” In view of these disclosures, the examiner concludes (Answer, page 5)
that “[o]ne skilled in the art would have been motivated to prepare the compounds of
Doehner et al. and especially in view of the teachings of Barnes et al. to arrive at the
instant claimed compounds with the expectation of obtaining additional beneficial
compounds which would have fungicidal activity.”
Appellants argue (Brief, page 7) that Doehner:
[R]epresents an enormous number of possible pyrrole
compounds. Indeed, there are millions of possible
permutations of the disclosed structure, particularly in light of
the fact that the positions of the substituents W, X, Y, and Z on
the pyrrole ring are not specified. Thus, while this generic
formula may encompass the instantly claimed compounds,
Doehner et al do not expressly describe the instantly claimed
compounds.
Appellants make similar arguments with regard to Barnes. See Brief, page
10. In addition, appellants note (Brief, page 10) that Barnes “do not disclose or
suggest a pyrrole compound having no phenyl substituents…. X in the compounds
disclosed by Barnes et al. must be phenyl or substituted phenyl.”
In response, the examiner argues (Answer, page 11) that the Doehner
“reference can be taken alone and in combination with the Barnes et al. reference.”
The examiner argues further (Answer, page 8) that “[b]y picking and choosing from
Accordingly, we note the examiner withdrew the Final Rejection of claim 16 under
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