also mean that numerous blocking agents other than those with
a 2,2,6,6-tetramethyl piperidinyl group likewise are not
described. It was not until Gras was cited that applicants
seem to have arrived at the "subgenus" now claimed, i.e.,
isocyanates blocked with any blocking agent other than one
having a 2,2,6,6-tetramethyl piperidinyl group. The appeal
does not involve a case where an applicant describes and
originally claims a plurality of species, some of which turn
out to be in the prior art. An amendment to eliminate the
species within the prior art may be appropriate. Compare In
re Johnson, 558 F.2d 1008, 194 USPQ 187 (CCPA 1977). Each
species may be regarded as a different invention and
cancellation of one invention from a claim does not mean that
the remaining inventions claimed are not described. Thus, if
applicants elected to cancel one member of the Markush group
of claim 4, we doubt it could be argued that the specification
did not describe the remaining members of the Markush group.
C. Decision
The examiner's rejection of claims 1-5 over Cook or Konig
in view of Uhrhan is reversed.
The examiner's rejection of claims 1-4 as failing to
comply with the description requirement of the first paragraph
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