Appeal No. 1997-2184
Application 08/278,441
failing to comply with the second paragraph of the statute.
Here, the examiner has merely announced that he does not
understand what substituents are intended by the terminology
used in the claims, that is, the examiner does not understand
what are the "non-interfering substituents" R and R .6 7
Moreover, although the examiner does not precisely reference
the exact claim term to which he objects, the examiner
expresses his concerns by stating at page 3 of his Answer
"[w]hat are the numbers 1-10 for La? What linker groups
are intended? Are 1-10 oxygens, sulfur, carbon, nitrogen,
Se, P, Ge, Pb also intended? Thus, the claims are
indefinite."
Neither expressed ground serves as a basis for sustaining
either rejection.
As we have stated above, the question to be resolved is
whether the hypothetical person of ordinary skill in the
relevant art, having read appellants' specification, would
have been able to determine the scope of appellants'
invention. Appellants have stated that the meaning intended
for the term "non-interfering substituent" was a substituent
which does not interfere with the compounds' sPLA inhibiting
2
properties (see page 5 of the brief). Considered with the list
6
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