Appeal No. 95-4830
Application 07/899,361
recited in appellants’ claims 1 and 2 only in that in the
terminal ester group shown at the left in each compound, the
positions of the carbonyl and oxygen in Suzuki’s ester are
reversed relative to the structure in appellants’ claim 1.
That is, Suzuki discloses a terminal alkyloxycarbonyl group,
whereas the compound recited in appellants’ claim 1 has a
terminal alkanoyloxy group.
The examiner argues that in the original parent case,
appellants claimed both compounds having R-COO- and R-OCO-
terminal ester groups, and therefore presented them as
equivalents (answer, page 5). Also, the examiner argues,2
appellants’ specification teaches that both terminal ester
groups are capable of performing the same tasks. See id. The
examiner states that she cannot understand how the compounds
now can differ just because only one of them now is claimed.
See id.
The deficiency in the examiner’s argument is that she
relies only upon appellants’ disclosure for the functional
2In the examiner’s answer, only page 7 is numbered. The
numbers referred to herein of the other pages are those which
should have been assigned to those pages.
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