Appeal No. 1998-2010
Application No. 08/542,861
Example 4, and page 68, lines 26-37, describes the procedure one of ordinary skill in the
art can use to prepare sulfamoyl halides. The specification, pages 55, 56, example 8 and
pages 58-59, appears to support methods of preparing succinic acid (succinate)
derivatives.
The examiner additionally argues that appellants have failed to show how to
selectively prepare hetero rings at one ring position versus the many positions possible for
ring systems that include mono-, bi- and tri- cyclic rings. Answer, page 6. The
specification, page 63, however, states that utilizing the procedures set forth therein, the
compounds of Tables 4-14 can be prepared and that utilizing the intermediates of
examples 1-13 according to the procedures of example 14, the compounds shown in
tables 4-16 could be prepared. The appellants further argue that a person skilled in the art
would recognize where and how the heteroatom containing rings could be attached to the
backbone structure set forth in the disclosure. Brief, page 10. Appellants reference
several patents and general chemistry reference materials to support this position. Brief,
pages 10-14. The examiner responds to this argument with the statement (Answer, pages
6-7):
The fact that rings included within the instant scope may be known rings as
appellants urge by referring to various organic textbooks, is not the issue but
rather if the specification as filed provides sufficient enablement to make
hetero-substituted final products of the scope being claimed. ... While the
generalized routes in the specification may provide sufficient guidelines for
making final products listed in the tables, the
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