Appeal No. 97-0226
Application No. 08/441,965
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 4) that:
The specification does not teach how to provide
R groups in which the carbon atom linking the R4 4
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 9 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 4 of the Brief. According to appellants, the
Bennet reference teaches (Brief, pages 3 and 4) 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.
This definition explains why the claimed complex has five
bonds on the linking carbon atom. The examiner’s reliance on
9
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