Appeal No. 1997-1790
Application 08/171,550
aldimines (col. 4, lines 7-20), constitute a description of an aldimine prepared from isobutyraldehyde
and bis-(4-aminocyclohexyl)-methane that would fall within appealed claims 13 and 15 as if the same
were described by name, such that Mormile describes the invention encompassed by appealed claims
13 and 15 within the meaning of § 102(e). See generally, In re Sivaramakrishnan, 673 F.2d 1383,
213 USPQ 441 (CCPA 1982).
The examiner has advanced the position that because of such disclosure in Mormile, it would
not require judicious selection from the teachings of the reference to select isobutyraldehyde and bis-(4-
aminocyclohexyl)-methane to form an aldimine falling within claims 13 and 15, relying on the authority4
of, inter alia, Sivaramakrishnan, supra (answer, pages 4-5). Appellants submit that the sole
disclosure of bis-(4-aminocyclohexyl)-methane (HMDA) as a “suitable starting material for preparing
aldimines . . . is not sufficient to satisfy the description requirement of” § 102(e) and point out that the
depicted “preferred cycloaliphatic diamines include” (Mormile, col. 4, line 18, to page 5, line 20) “all of
the known cycloaliphatic diamines” (principal brief page 4). Thus, appellants contend that because of
the wording of the disclosure of Mormile and the listing therein of “most, if not all, of the known
cycloaliphatic diamines,” there has been no “narrowing of the broad term ‘cycloaliphatic diamines’” and
the reference “merely names HMDA as a suitable cycloaliphatic diamine for reacting with any number
of aldehydes and ketones to form aldimines or ketimines” (principal brief, page 5). Thus, appellants
submit that “a similar listing of compounds was not found sufficient to anticipate the claims in In re
Wiggins, 488 F.2d 538, 179 USPQ 421 (CCPA 1973),” pointing to the statement by the court that
“the listing of the compounds by name constituted nothing more than speculation about their potential or
theoretical existence. The mere naming of a compound in a reference, without more, cannot constitute a
description of the compound” (principal brief, pages 5-6). Accordingly, appellants take the position
4Contrary to the examiner’s interpretation of the term “diamino dicyclohexyl methane” in claim 13
(answer, page 4), we interpret this term to be limited to the unsubstituted isomers of bis-
(aminocyclohexyl)-methane as set forth at page 13, lines 2-4, of the specification, bearing in mind that
this term must be given the broadest reasonable interpretation consistent with appellants’ specification
as it would be interpreted by one of ordinary skill in this art. In re Morris, 127 F.3d 1048, 1053-56,
44 USPQ2d 1023, 1027-30 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989).
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