Appeal No. 94-3359
Application 07/941,566
or more" other substitutents selected from a group of recited
substituents. However, while claim 1 is a "comprising" claim and
is, thus, open to the inclusion of other ingredients, the
compound of formula I in claim 1 does not recite any
substitutents except for the two "floating" hydroxyl units. The
remaining available positions in the compound depicted by claim 1
must be occupied by hydrogens. Accordingly, the limitation in
claim 9 is understood by us not to further limit the dihydroxy
substituted benzenes claimed but is a claim to an entirely
different compound or class of compounds than claimed in claim 1.
Thus, claim 9 fails to further limit the subject matter of claim
1 and by, definition raises an unreasonable degree of certainty
with respect to the scope of what appellants intend to claim in
claim 9 in contravention of the requirements of 35 USC 112,
second paragraph.
The decision of the examiner rejecting claims 1 through
12 under 35 USC 101 and 35 USC 112, first paragraph is REVERSED.
The decision of the examiner rejecting claims 1 through 4, 7 and
9 through 12 under 35 USC 102 and 35 USC 103 is AFFIRMED. The
rejection of claims 6(3) and 8 under 35 USC 102 and 35 USC 103 is
REVERSED. We have entered new grounds of rejection.
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