Appeal No. 1998-0900
Application No. 08/290,047
encompassed by the claim. Thus, the claims do not apprise those skilled in this art of
the scope of the claimed invention, even when read in light of the specification. See In
re Moore and In re Hammack, supra.
Thus, we find no error in the examiner's determination that the cited claim
language lacks written descriptive support in the specification as filed and also renders
the claims indefinite as to the scope of subject matter encompassed thereby.
Therefore, we affirm the rejection of claims 1 - 4, 15, and 16.
The rejections under 35 U.S.C. § 103
Claims 1 - 4, 15, and 16 stand rejected under 35 U.S.C. § 103 as being obvious
over Hibino. Having determined that Hibino does not constitute prior art to the presently
claimed invention, we reverse this rejection.
Claims 1 - 4, 15, and 16 stand rejected under 35 U.S.C. § 103 as obvious over
the combination of Wagner, Heilmann, and Ishii.
The examiner relies on Wagner as disclosing "compounds that are homologous
to the claimed compounds . . . [which] are used to prepare polymers." (Answer, page
10). The examiner relies on Heilmann and Ishii as establishing that "structurally similar
compounds, homologous compounds do in fact possess a community of properties in
common." (Id.). While the examiner has referenced column 12, lines
30-44 of Heilmann, the compound structurally represented, therein, is an acid rather
than an ester as presently claimed and therefore lacks the alkyl group which is the
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