Appeal No. 97-0225
Application No. 08/357,789
specification, the nature of the claimed invention, the state
of the prior art, the relative skill of one of ordinary skill
in the art and the predictability or unpredictability of the
art. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404
(Fed. Cir. 1988), citing with approval Ex parte Forman, 230
USPQ 546, 547 (Bd. Pat. App. & Int. 1986).
Here, the examiner argues (Answer, page 5) that:
The specification does not teach how to
provide R groups in which the carbon atom
4
linking the R4 group to the carboxyl group has a
valence of 5. Typically a carbon atom has a
valence of 4. Page 6 of the specification and
claim 1 teach the use of R4 groups which contain
carbon atoms with a valence of 5.
In so arguing, the examiner fails to consider the state of the
prior art as represented by the prior art reference referred
to at page 5 of the Brief. According to appellants, the
Bennett reference teaches (Brief, page 5) that:
[T]he claimed formula is a complex as
stated, and a complex, as would be apparent to
those skilled in the art, is a component in
which a particular atom is attached to other
atoms or groups of atoms to a number in excess
of its charge or oxidation number.
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