Appeal No. 1997-2209
Application No. 08/179,196
alkyl” or “lower alkoxy” in the present context to be
indefinite on its face. Nor has the examiner shown that one
skilled in the relevant art would be unable to determine,
given the written description found in the present
specification, what lower alkoxy or lower alkyl groups would
be covered by appealed claims 17, 23 and 26. In our view, the
various carbon number limits for the term “lower alkyl” in
Sinta and Urano have little bearing on the meaning of “lower
alkyl” as used in the present specification, because the prior
art references describe these limits in contexts which are
different from the present application. Whatever the reasons
may be, Sinta and Urano elected to place further limitations
on, or to describe a preferred embodiment for, the term “lower
alkyl.” These further limitations or preferred embodiment in
the prior art references do not prove that one skilled in the
relevant art would have considered the term “lower alkyl” or
“lower alkoxy” to be indefinite in the context of the present
application. To the contrary, it seems to us that these
further limitations or preferred embodiment described in the
prior art references might clarify, rather than confuse, what
specific alkyl groups would definitely be considered as “lower
7
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