Appeal No. 1997-1826
Application No. 08/304,951
and teachings of Carabateas as a whole. See In re Burckel,
592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979)(“[A]
reference must be considered not only for what it expressly
teaches, but also for what it fairly suggests.”).
Appellants’ argument that Carabateas fails to
specifically disclose any compounds with primary amino
substituents in any of the positions of the benzene ring is
technically correct but not persuasive (Brief, pages 5-6;2
Reply Brief, page 1). “Examples in a reference are merely
that, exemplary of the broader disclosure, all of which is
available for what it clearly teaches.” In re Widmer, 353
F.2d 752, 757, 147 USPQ 518, 523 (CCPA 1965). See also In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA
1976)(“The fact that neither of the references expressly
discloses asymmetric dialkyl moieties is not controlling; the
question under 35 USC 103 is not merely what the references
expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time the invention was
2Although no examples in Carabateas are directed to
primary amino substituents, the reference specifically teaches
the preparation of compounds with a primary amino substituent.
See col. 3, ll. 24-32.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007