Ex parte KUKLA et al. - Page 5

                 Appeal No. 1997-1826                                                                                                                   
                 Application No. 08/304,951                                                                                                             

                          The examiner concedes that not every disclosure of a                                                                          
                 generic formula in a prior art reference that encompasses the                                                                          
                 claimed compounds is sufficient to render the claimed species                                                                          
                 compounds obvious, citing In re Baird  (Answer, page 4).           1                                                                   
                 However, as noted by the examiner on pages 2-4 of the Answer,                                                                          
                 Carabateas discloses the same basic ring structure as recited                                                                          
                 in claim 14 on appeal and the claimed compounds vary only by a                                                                         
                 single substituent on the benzene ring of this basic                                                                                   
                 structure.  Carabateas further teaches that various low                                                                                
                 molecular weight substituents such as halogen, lower-                                                                                  
                 alkylamino and amino substituents are relatively equivalent                                                                            
                 for purposes of his invention, and exemplifies specific                                                                                
                 compounds where the 8-position is substituted by alkylamino                                                                            
                 and the 9-position is substituted by halogen (see Carabateas,                                                                          
                 col. 1, l. 45-col. 2, l.3; Table C in col. 8, compounds 7J,                                                                            
                 7K, 7L, 7M and 7N).  Additionally, the reference specifically                                                                          
                 teaches how to prepare the unsubstituted amino substituent on                                                                          
                 the benzene ring (see Carabateas, col. 3, ll. 24-32).  We                                                                              
                 agree with the examiner that the compounds recited in claim 14                                                                         
                 on appeal would have been fairly suggested by the disclosure                                                                           

                          116 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994).                                                                     

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