Appeal No. 1997-2184
Application 08/278,441
substituent directly attached to the indene moiety.
In Girard, the examiner directs our attention to the
definition of R as "carboxy" and, for the first time in his4
Answer at page 6, to the disclosure in column 2 wherein R is4
8 8 9 9
defined as O-R , R is R and R is lower alkyl substituted with
-COOH group. According to the examiner, the disclosure of R4
as carboxy in general and the specific disclosure of the group
-O-(CH ) -COOH "teach(es) and suggest(s) appellant's
2n
invention." However, when R is "carboxy", the "carboxy"4
radical is attached directly to the indene moiety. With
respect to the examiner's newly proposed interpretation of R4
we simply observe that the examiner has mischaracterized the
reference in reaching his conclusion. Specifically, while
4 8 8 9 9
Girard does disclose that R may be -OR and R may be R , R is
defined as lower alkyl. Contrary to the examiner's
representation, R is not defined as lower alkyl substituted9
2 3
with -COOH. Rather, it is R and R which may be independently
selected from the groups denominated as "c)" through "g)" in
column 2 lines 29 through 39 of Girard. Suffice it to say we
find no disclosure in Girard which would have suggested
appellants' particularly substituted indene-1-acetamides.
10
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