Appeal No. 1998-0900
Application No. 08/290,047
Claims 1 - 4, 15, and 16 stand rejected under 35 U.S.C. § 112, first paragraph
and second paragraph, as being based on a written description which does not support
the presently claimed invention as to the use of the phrase “substantially free of other
enantiomers" and are rendered indefinite by the terminology "substantially free."
(Answer, paragraph bridging pages 15-16). In rebuttal, appellants urge that the phrase
"finds inherent support since the specification and claims specifically call for 'optically
active'. If other enantiomers are present, they detract from the optical activity." (Brief,
page 18). However, we do not agree that the phrase "optically active" would inherently
suggest a product which was "substantially free of other enantiomers." Similarly, we
are not persuaded that the melting points of the exemplified species (id.) can
reasonably be read as providing a written description of this claim limitation. We agree
with the examiner's position that the disclosure in support of the presently claimed
invention lacks antecedent basis in the specification as filed for the phrase
"substantially free of other enantiomers."
With respect to whether the claims are indefinite, we note that the disclosure
presented in support of the claimed invention does not explicitly define what is meant
by "substantially free." Further, appellants have not demonstrated that this phrase
would have a meaning recognizable by one skilled in this art. Thus, it is not possible,
without making unsupported assumptions, to interpret the phrase as meaning a pure
optically active dipeptide. A product which is less than a racemic mixture would exhibit
some level of optical activity. Without more, it is not readily apparent just what is
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