Appeal No. 2002-0798 Page 9
Application No. 09/107,688
transforming said scaffold moiety in said reaction*
products to alter at least one of its chemical or electrochemical*transforming the scaffold moiety portion of said reaction
properties and; *products to alter at least one of its chemical or electro-
*chemical properties, wherein said transformation
comprises
reacting said transformed scaffold moiety in said products *ring opening of a macrocycle that comprises at least one
with a further mixture of at least four chemical reactive compounds to *nitrogen-oxygen bond.
provide said library. *
* 2. The method of claim 1 further comprising reacting
*said transformed scaffold with a further set of at least four
*reactive chemical moieties.
It would appear that claim 2 of the '241 patent recites a specific embodiment of the
broader invention set forth in claim 13 on appeal. These claims are essentially identical
except for the requirement in the former claim that "said transformation comprises ring
opening of a macrocycle that comprises at least one nitrogen-oxygen bond." Under
these circumstances, it would appear that a Terminal Disclaimer is required to prevent
undue timewise extension of monopoly. See In re Vogel, 422 F.2d 438, 442, 164
USPQ 619, 623 (CCPA 1970)(Appealed claim 10, by reciting "meat," includes pork; its
allowance for a full term would extend the time of monopoly of the patented pork
process).
Conclusion
In conclusion, for the reasons set forth in the body of this opinion, we reverse the
examiner's rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a). We also
reverse the rejection of claims 13, 23 through 26, 29, and 30 under 35 U.S.C. § 112,
first paragraph. On return of this application to the Examining Corps, we recommend
that the examiner revisit the issue of obviousness-type double patenting in light of the
claims of U.S. Patent No. 5,780,241.
The examiner's decision is reversed.
REVERSED
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