Appeal No. 1997-2193
Application 07/986,648
We find, contrary to the examiner's conclusion, that the
claimed compounds do possess a common structural feature
disclosed as essential to the disclosed utility of being an
anionic surfactant. Rather than consider the compound as a
whole, the examiner has focused on the individual moiety
defined by the Markush terminology. As can be seen from claim
6, the Markush terminology defines the moiety N(R)WA and the
question to be decided is whether the compounds defined by the
different moieties have so-called common structural features
and common utilities.
Suffice it to say, the examiner has not even addressed
this issue but has instead merely pronounced that the members
of the Markush group are allegedly separately classifiable and
separately patentable. We observe that the first action by
the examiner in this application was to require restriction
and in so-restricting the claims, at that time, the examiner
did not consider the subject matter he now finds improperly
joined to be subject to restriction. Under these
circumstances, the examiner should have made a new requirement
for restriction if he could present the necessary underlying
evidence to support such a requirement. Based on this record,
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