Appeal No. 95-1618
Application 08/033,456
On October 15, 1993, appellants filed an amendment which the examiner objects to as
introducing new matter into the specification and broadening the scope of the disclosure. The
examiner objects to the designation of formula I at the bottom of page 12 and at page 16, line 1 as
“Ir ”, formula I at the bottom of page 14 as “Irr,” and formula I at the bottom of page 15 as “Irrr.”
According to the examiner, these changes expand the scope of the original disclosure. Appellants
argue that by introducing of the prime symbols, they in no way broadened the original disclosure or
introduced new matter since formulas Ir, Irr and Irrr are subgenuses of formula I on page 5 of the
specification. The examiner, however, does not consider the formulas Ir, Irr and Irrr to be subgenus
compounds, but tautomers and/or isomers of formula I. The examiner asserts in response to
appellants’ arguments in the Brief that appellants are “confusing” the terms subgenus with tautomers
or isomers.
The examiner also objects to the amendment at page 10, line 34 to page 11, line 8 of the
specification which was amended as follows (the subject matter deleted which is at issue is enclosed
in brackets and is presented in bold type for emphasis):
The compounds of formula I exist in several tautomeric forms, due to the presence
of the carbonyl carbon at position 2 on the azaoxindole ring and the acyl carbon
attached to the carbon at position 3 of the ring. Such compounds also exist as
geometric isomers of the tautomeric structure in which a double bond exists [between
the nitrogen at position 1 and the carbon at position 2 of the ring]. This
invention relates to all tautomeric forms and geometric isomers of the compounds of
formula I.
The examiner considers the deleted subject matter “as broadening the scope of the disclosure and
thus introduce new matter” (Paper No. 26, p. 1). Appellant argues that the specification as originally
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