Appeal 97-1458
Application 08/329,940
takes its definition from the context in which it was used by
the inventor).
The examiner, responding to counsel's arguments, states
that "there are about 20 compounds with that empirical formula
and there is no reason to suppose that 'perfluoronitroalkanes'
as a class would include that formula" (Examiner's Answer,
page 5). The examiner's argument, like counsel's argument,
while interesting is not particularly persuasive. One cannot
but wonder what the other 20 compounds might be. The examiner
fails to identify the structure of any of those 20 compounds
and, perhaps more important, fails to provide a reference
showing that any of those 20 compounds were known as of
applicants' filing date.
The examiner refers to Flynn, U.S. Patent 5,401,429
(Mar. 28, 1995), col. 2, line 66 through col. 3, line 21. It
legitimately could be argued that the description in Flynn is
more consistent with counsel's argument than the examiner's
rationale. Unfortunately for applicants, the Flynn patent
issued after applicants' filing date and cannot assist in
determining whether applicants' disclosure is enabling. In re
Glass, 492 F.2d 1228, 181 USPQ 31 (CCPA 1974); In re
- 12 -
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007