Appeal 2007-0686
Reexamination Control 90/004,812
Application 09/810,650
while the alkyls of the first group encompass alkyls such as methyl, ethyl,
propyl, butyl, amyl, hexyl, octyl and decyl, the branched alkyl of claims 9
and 11 must be butyl. Finally, claims 9 and 11 require R1 0and R2
0 both to be
branched butyl.
What the rationale in Fujikawa and Ruschig makes clear is that one
cannot disclose a forest in an application and then pick a tree out of the
forest absent blaze marks directing those skilled in the art to that particular
tree. Appellants have not pointed us to, and we do not find, blaze marks in
the Japanese application directing us to the specific compound and narrow
10 and R might1 2
subgenus recited in claims 8-11. Simply disclosing that R
0
both be same moiety, and that moiety might be either a C 1-10 branched or
cyclic alkyl, such as hexyl or butyl, in the forest of possible diazodisulfones
described in the Japanese application does not reasonably lead one skilled in
the art to the specifically claimed R10 and R groups which define the2
0
compound of claims 8 and 10 or the narrow subgenus of claims 9 and 11.
For the above reasons, we sustain the Examiner's decision to reject
claims 8-11 under § 102(e) as being anticipated by Pawlowski and to reject
claims 9 and 11 under § 103(a) as being unpatentable over Pawlowski.
Miscellaneous
Appellants contend that the Examiner has committed legal error in
allegedly making a nonprecedential opinion the rule of law in the
examination of claims 8-11 thereby violating Appellants' due process rights
(Appeal Br. 9-12; Reply Br. 2-3).
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013