Appeal No. 2001-2095 6
Application No. 08/872,659
subject matter not described in the parent application, i.e., Nagy ‘660 is anticipated by or
rendered obvious over the teachings and suggestions of the intervening reference to
Reichle.
Claim 71 is directed to numerous limitations that do not appear in ipsissima verba
in either the specification or the claimed subject matter of the Nagy ‘660 parent.
Specifically, the definition of Y has been expanded to include P containing moieties and
C6-14 aryl. As to the first group of limitations directed to the definition of Y, we find that
the corresponding Y of Reichle is limited exclusively to -O-, oxygen. There is no teaching
or suggestion of moieties other than oxygen. Accordingly, the newly inserted limitations of
the claimed subject matter falling within the scope of the definition Y need not be given
further consideration as no prima facie case of obviousness can be established with respect
to moieties neither taught by, nor suggested by Reichle.
Claim 71 further contains a limitation of R’ being C7-20 alkaryl, C7-20 aralkyl. The
examiner should consider whether the presence of the limitation in Nagy ‘660 of R’ being
“C6 - C16 aryl,” column 2, line 36, is sufficient to support the above terms in the
application before us, particularly as the only disclosure in Reichle is that the corresponding
group may be “hydrocarbon.” See Reichle, column 3, lines 31-32.
Claim 71 is further directed to a limitation, “[w]here M is a Group 3 to 10 metal,”
which term has not been objected to by the examiner. The examiner should consider the
meaning of groups 9 and 10, as the Periodic Table of the Elements generally contains only
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