Appeal No. 1999-1155
Application No. 08/241,253
search was performed for prior art relating to tetraazacyclododecanes, and that
subclasses 465 and 474 of Class 540, pertaining to particular heterocyclic compounds,
including tetraazacyclododecanes, were searched. However, there is nothing to
indicate that the embodiment of the claimed invention represented by claim 5 was ever
searched by the examiner. Upon return of the application to the group, the examiner
should review the record and ensure that a complete and proper search of the subject
matter claimed has been conducted.
Indefiniteness
The examiner’s rejections of unspecified claims under the first and second
paragraphs of 35 U.S.C. § 112 can only be described as perfunctory in nature, and we
have reversed the rejections as lacking underlying factual support or analysis.
Nevertheless, the phrase “each R’ is independently hydrogen or alkyl, alkoxy,
cycloalkyl, hydroxyalkyl or aryl, each of which is optionally substituted” (in claim 1, e.g.),
appears to be incomplete in the absence of an indication of appropriate substituting
moieties. Upon return of the application to the examining group, appellants and the
examiner should determine whether the claim is indeed incomplete when read in light of
the specification.
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007