Appeal No. 1999-1729 3
Application No. 08/527,217
THE REJECTION
Claims 1 through 3 stand rejected under 35 U.S.C. § 112, first paragraph, for
failure to teach how to use the invention.
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner and agree with the appellants that the rejection of the claims under § 112
is not well founded. Accordingly, we reverse this rejection.
Rejection under 35 U.S.C. § 112
It is the examiner’s position that, “[t]he specification is extremely vague,” and no
information is forthcoming as to, “1) how to convert these intermediates to final
products, 2) what these ‘derivatives’ and ‘antibiotics’ look like, and 3) for the
‘derivatives’, what use they have.” See Answer page 4. We disagree that these
requirements, as stated by the examiner, are necessary to teach, “how to use” within the
meaning of the statute, 35 U.S.C. § 112.
The claimed subject matter before us is not directed to a class of novel $-lactam
compounds, but to a process for providing, “a simple and efficient method for the
synthetic preparation of a $-lactam compound.” See specification, page 2.
We find that the invention is directed to a method for the preparation of a
$-lactam compound, “having usefulness as an intermediate of $-aminoacid derivatives and
certain antibiotics having a chemical structure resembling that of penicillin.” See
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