Appeal No. 1997-2167
Application 08/137,444
original disclosure. The examiner relies on Ex parte
Grasselli, 231 USPQ 393 (Bd. App. 1983), aff'd mem 738 F.2d
453 (Fed. Cir. 1984) in support of his position. Appellants
urge that the "provisos" were added to specifically exclude
from the claims a known compound which known compound is
disclosed in the specification in Example 7.
The examiner's reliance on Grasselli, a case decided on
different facts than the facts in this case, does not support
the position taken by the examiner here. Here, appellants
discovered, apparently after filing the instant application,
that the broad claim terminology included compounds which were
known, that is, unpatentable to appellants because, based on
appellants' own admission, they are described in the prior
art.
Appellants' compound claims are so-called closed claims,
that is, they do not include any of the well-known open-ended
terms which leave the claims open to the inclusion of other
components. Thus, the compound claims include only the
compounds defined by the various substituents R , R and R in1 2 3
the formula depicting the compounds. Thus, the claims include
every compound defined by the various permutations for the
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