Appeal No. 1996-0160
Application 07/898,691
not support the examiner’s finding of nonenablement, the rejection is reversed.
Rejection II
According to the examiner, the specification, as originally filed, does not provide
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support for (i) the “ester” derivative set forth in claims 2 and 3, and (ii) the phrase “R may
be any amino acid,” as set forth in claim 1. Answer, p. 7.
With respect to the ester derivative, the appellants acknowledge in their appeal
brief (Paper No. 21) filed August 26, 1994, that “the phrase ‘which is an ester or an amide’
was inadvertently not deleted from claim 2,” in their amendment filed under
37 CFR § 1.116. Brief (Paper No. 21), p. 15. Since the appellants and the examiner are
in agreement that the phrase is improper, the rejection is affirmed.
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As to the phrase “R may be any amino acid,” we find that the appellants point to p.
8, lines 19-20 of the specification for support. Brief (Paper No. 21), p. 15-16. We have
reviewed the referenced section of the specification, but in our view the statement that R5
may vary widely, does not to extend to amino acids at other positions. That is, we find that
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the specification speaks to the amino acid residue at the R position itself, and not to when
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R is R . Accordingly, the rejection is affirmed.
Rejection III
The examiner argues the recitation of the amide derivatives in claim 2, line 6 and
the last line, is indefinite because “said amide derivatives would include the various
amides already recited in the claim on lines 5 and 12-13.” Answer (Paper No. 25), p. 7.
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