Appeal No. 1997-3805
Application No. 08/439,602
5,447,868); the present divisional application; and divisional application serial no.
08/439,603 (now U.S. Patent 5,563,071).
Claims 24 through 26 on appeal are directed to a method, composition and kit,
respectively, each requiring an enhancer selected from the group consisting of tertiary and
quaternary amines having a phenyl or substituted phenyl group attached to the nitrogen.
Patent No. 5,563,071 claims a similar method, composition and kit, but each independent
claim requires an enhancer selected from the group consisting of tertiary and quaternary
amines having a hydroxy alkyl or esterified hydroxy alkyl group attached to the nitrogen.
Patented claims 4, 10, and 16 limit the enhancer component to phenyl diethanolamine.
The examiner argues that patented claims 4, 10 and 16 are not patentably distinct from
claims 24 through 26 on appeal because phenyl diethanolamine is simultaneously a
tertiary amine having a phenyl group attached to the nitrogen, and a tertiary amine having a
hydroxy alkyl group attached to the nitrogen. Examiner’s Answer, page 5. That is, the
specific enhancer of the patented claims, phenyl diethanolamine, falls within the presently
claimed genus of enhancers comprising tertiary and quaternary amines having a phenyl
group attached to the nitrogen, as well as the patented genus of enhancers comprising
tertiary amines having a hydroxy alkyl group attached to the nitrogen. Accordingly, the
claims stand rejected under the doctrine of obviousness-type double patenting.
Appellant argues that the double patenting rejection is improper because the
present application and the application leading to the patent were filed in response to a
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007