Appeal No. 95-0110
Application 07/953,783
emphasized by appellants' legal representative at the oral
hearing, claim 1 of the Suzuki patent recites in the preamble
that the compound claimed is a "liquid crystal compound of a
naphthalene nucleus represented by the formula..." (emphasis
added). Thus, we interpret Suzuki's claim 1 as requiring at
least one of the substitutents "A" or "B" to be a naphthalene
nucleus. Additionally, the "R " moiety in formula I of claim 1
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of Suzuki is an alkyloxycarbonyl (ROC=O) radical unlike
appellants' moiety in the same position which is a (R C=OO)
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radical. Accordingly, the rejection of the claims as anticipated
by Suzuki cannot be affirmed.
We have not overlooked the fact that the Suzuki
disclosure is broader in scope than Suzuki's claims.
Specifically, Suzuki's disclosure does not recite or require that
at least one of the substitutents "A" or "B" is a naphthalene
moiety. Nonetheless, even under the theory of anticipation
stated in In re Schaumann, 572 F.2d 312, 315-317, 197 USPQ 5, 9
and 10 (CCPA 1978) (a theory which we note the examiner has not
advanced) the rejection under 35 USC 102(e) is not sustainable.
The court in Schaumann held that anticipation may be
found in a reference which does not describe ipsimis verbis a
particular compound but does describe a pattern of preferences
and also describes a definite and limited number of compounds.
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