Appeal 2007-0686
Reexamination Control 90/004,812
Application 09/810,650
court said "[w]e do not see that listing the latter [n-propylamine] with the 18
others adds anything to the initial statement that one may use an alkyl amine
containing from 2 to 6 carbon atoms." Id. The court required more specific
guidance to direct those skilled in the art to the claimed compound to satisfy
the written description requirement, stating that
[i]t is an old custom in the woods to mark trails by
making blaze marks on the trees. It is no help in
finding a trail or in finding one's way through the
woods where the trails have disappeared -- or have
not yet been made, which more like the case here -
- to be confronted simply by a large number of
unmarked trees. Appellants are pointing to trees.
We are looking for blaze marks which single out
particular trees. We see none. Id.
Here, claims 8 and 10 recite a specific diazodisulfone compound
which falls within the first of seven groups disclosed in the Japanese
application. While the first group encompasses straight-chain, branched or
cyclic alkyls, the alkyl of claims 8 and 10 must be cyclic. Furthermore,
while the alkyls of the first group encompass alkyls such as methyl, ethyl,
propyl, butyl, amyl, hexyl, octyl and decyl, the cyclic alkyl of claims 8 and
10 must be hexyl. Finally, claims 8 and 10 require R1 0and R 20 both to be
cyclic hexyl.
Similarly, claims 9 and 11 recite a narrow subgenus of diazodisulfone
compounds which falls within the first group disclosed in the Japanese
application. While the first group encompasses straight-chain, branched or
cyclic alkyls, the alkyls of claims 9 and 11 must be branched. Furthermore,
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