Appeal No. 95-1618
Application 08/033,456
or more substituents independently selected from fluoro, chloro, bromo, iodo, hydroxy, (C -C ) alkyl,
1 6
(C -C ) alkoxy and thiofluoromethyl; and W is hydrogen, (C -C ) alkanoyl, (C -C ) cyclo-1 3 2 10 5 7
alkylcarbonyl, (C -C ) phenylalkanoyl, chlorobenzoyl, thenoyl, omega-(C -C )-alkoxycarbonyl-(C -7 10 2 4 3
C )alkanoyl, (C -C )alkoxycarbonyl, phenoxycarbonyl, 1-[(C -C )acyloxy]-(C -C )alkyl, 1-[(C -71 0
5 2 1 4 2 4 2
C )alkoxy-carbonyloxy]-(C -C )alkyl, (C -C )-alkylsulfonyl, (C -C )alkyl, methylphenylsulfonyl and5 1 4 1 3 1 3
di-(C -C )alkyl phosphonate; with the proviso that (a) when E is nitrogen, then at least one of X and
1 3
Y is other than hydrogen; (b) when either R is NHR or R is (C -C )alkyl, then W is hydrogen;2 6 1 1 6
or a pharmaceutically acceptable salt thereof.
The Rejections2
I. Claims 1-6 and 8-13 stand rejected under 35 U.S.C. § 112, first paragraph, on the
grounds that (i) certain amendatory subject matter to the specification in an amendment filed October
15, 1993 (Paper No. 25) constitutes new matter in that “by deletion of selected language from the
specification and insertion of new formula designations appear to be expanding the scope of the
original disclosure whereby new matter is introduced...,” and (ii) the specification fails to provide an
adequate written description of the invention and fails to adequately provide an enabling disclosure
for the following reasons as stated in the final rejection (Paper No. 26, pp. 3-4):
Applicants* specification fails to clearly distinguish between tautomer
structures. It is not clear which tautomers are intended. The originally filed
disclosure appeared to intend a limited scope of tautomer structures however
pursuant to applicants* amendment of 10-15-93 a different broader scope appears to
2In the final rejection, the examiner rejected claim 8 on the ground that the formula in claim 8 did not have support
in the original disclosure. The examiner withdrew this rejection in view of appellants’ "suggestion to amend the Formula
in claim 8 so as to recite a hydroxyl group (instead of a single bonded oxygen)" (Answer, p. 2). Appellants suggested
amending “the structure of claim 8 such that the oxygen in the 3- position is bonded to a hydrogen since it would be obvious
to one of ordinary skill in the art that said compound as it presently stands would have that chemical structure” (Brief, p. 1).
Appellants also presented a table in the Brief providing page and line numbers in the specification as originally filed for
support for the formula in claim 8 (Brief, pp. 4-7). It appears to us that despite the suggestion made by appellants which
prompted the examiner to withdrawn this portion of the rejection, the specification on page 6, line 25, as well as original
claim 1, provides support for the formula in claim 8. Both disclose that W can be hydrogen.
-3-
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