Appeal No. 1996-2357
Application 08/124,617
formula in claim 3 to the structure on the right in the second
1 4
row of compounds in claim 4, it appears that R to R must be
members of a ring rather than being bonded to a ring. If R1
to R must be members of the ring, then it appears that the4
ring cannot be aromatic, in which case the claim excludes
Bögemann’s aryl group.
In some instances, it is possible to make a reasonable,
conditional interpretation of claims adequate for the purpose
of resolving patentability issues to avoid piecemeal appellate
review. In the interest of administrative and judicial
economy,
this course is appropriate wherever reasonably possible. See
Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int.
1993); Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984).
In other instances, however, it may be impossible to determine
whether or not claimed subject matter is anticipated by or
would have been obvious over references because the claims are
so indefinite that considerable speculation and assumptions
would be required regarding the meaning of terms employed in
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