Appeal No. 1997-1856
Application 08/142,284
668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982), however, working examples
are not required to satisfy section 112, first paragraph.
The rejection of claims 1 through 4 under 35 U.S.C. § 112, first paragraph, is
reversed.
35 U.S.C. § 112, SECOND PARAGRAPH
In the Examiner's Answer, section (10), the examiner entered a new ground of
rejection of claims 1 through 4 under 35 U.S.C. § 112, second paragraph, as indefinite.
According to the examiner, claims 1 through 4 are indefinite in view of the recitation
“[a] compound ... and the pharmaceutically-acceptable cationic salts and prodrugs thereof”
(emphasis added). The examiner argued that it is unclear whether these claims “read on”
a combination of a compound and its pharmaceutically acceptable cationic salts and
prodrugs. To resolve this issue, the examiner recommended that the claims be amended
using the language “a compound ... or a pharmaceutically-acceptable cationic salt or a
prodrug thereof” (Examiner's Answer, page 7, section (10)).
In the Reply Brief (Paper No. 17), appellant proffered an amendment designed to
overcome the examiner's new ground of rejection. In the Supplemental Examiner's Answer
(Paper No. 18), however, the examiner does not indicate whether the proffered
amendment has been entered; nor does the examiner repeat or refer to the rejection under
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