Appeal No. 1998-0900
Application No. 08/290,047
polymerization and copolymerization of these optically active dipeptides. For the
purposes of this appeal, we find it unnecessary to determine whether claim 1
encompasses compositions or is directed, alternatively, only to the individual dipeptides
defined by the structural formula. It is sufficient to note that claim 1 requires that what
is claimed is "optically active." Thus, to the extent that the claim could be read to
encompass a combination of more than one dipeptide optical isomer, it is clear that one
isomeric form must predominate or there would be no observed optical activity.3 Thus,
the claim can not be read to encompass a racemic mixture of dipeptides.
The rejections under 35 U.S.C. § 112
In rejecting claims 1 - 3 stand under 35 U.S.C. § 112, second paragraph, the
examiner questions whether "[t]he phrase 'R5 . . . together with R4, forms a C5-C6-
cycloalkyl' is ambiguous. Does this mean that both R5 and R4 are individually cycloalkyl
or they form a single cycloalkylidene moiety or they form a nitrogen heterocyclic moiety
including the nitrogen to which they are attached?" (Answer, page 15). The examiner
has given several examples of how one skilled in this art could presumably read the
noted phase. (Id.) However, the examiner has not explained why the phrase, while
capable of interpretation, should be regarded as unclear merely because it may be
interpreted, alternatively, to encompass more than one possibility. In rejecting claim 3,
the examiner urges that "it is not known what is intended by 'derived from'." The
examiner urges that "[o]ne can derive a variety of different moieties from the same
amino acid and it cannot be determined which derivative is being referred to in claim 3."
3 Morrison and Boyd, page 84 - "Clearly, if we are to observe optical activity, the material we are
dealing with must contain an excess of one enantiomer; enough of an excess that the net optical rotation
can be detected by the particular polarimeter at hand."
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007