Appeal 2007-0292
Application 10/115,802
Armand CA 2200998 Sep. 25, 1998
Claims 31-42, 77, and 89 are rejected under the first paragraph of
35 U.S.C. § 112 for failing to comply with the written description
requirement. The Examiner believes that Appellants' Specification
disclosure fails to provide descriptive support for the "proviso" recited by
independent claim 31 (Answer 3-4).
All of the appealed claims are rejected under 35 U.S.C. § 102(b) as
being anticipated by Armand.1 According to the Examiner, one with
ordinary skill in this art viewing Armand's general formula would at once
envisage at least one compound falling within the scope of the appeal claims
(Answer 5-6).
OPINION
For the reasons which follow, we cannot sustain either of these
rejections.
The § 112, First Paragraph, Rejection
On this record, it is undisputed that Appellants' Specification
discloses, by generic and preferred formulae as well as by example, species
falling within the claim 31 formula and species excluded by the claim 31
proviso. The § 112, first paragraph, rejection is based on the Examiner's
belief that the written description requirement is violated because the
1 This is the only prior art rejection on appeal. The other prior art rejections
made by the Examiner in the most recent Office Action have been either
expressly withdrawn (Answer 2) or implicitly withdrawn by virtue of not
being included in the Answer.
3
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