Appeal No. 96-0676
Application 07/963,165
article which discloses that some compounds have higher
affinity and/or selectivity for one receptor than for another
is not sufficient. Moreover, although the claims to which
this rejection is applied include appellants’ compound claims
1-3 and method claims 7 and 9, the examiner does not explain
how the rejection applies to these claims.
For the above reasons, we do not sustain the rejection of
claims 1-3 and 6-10 under 35 U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have
been interpreted by one of ordinary skill in the art in light
of appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner argues that “acyl” is indefinite because it
is not clear whether it means RCO- or RSO - (answer, page 5).
2
“Acyl” has been defined as a radical having the general
7
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