Appeal No. 2000-0459
Application 08/838,584
On pages 4-5 of the answer, the examiner asserts that
appellants are claiming an oxygen atom singly bound to nitrogen
atom in a tetra alkyl piperidinyl group. The examiner states the
valence of the oxygen atom depicted in claim 24 is improper. The
examiner further states the definition of R in claim 24 does not
include a charged species or radical. The examiner states that
the references discussed by appellants in the brief are not
relevant to a determination of whether claim 24 is indefinite
because the references do not teach a non-charged oxygen atom
singly bound to a nitrogen atom, and do not teach an oxyl radical
in appellants’ claimed composition.
In the reply brief, on page 2, appellants state that the
references are relevant because they teach oxyl as a substitute
on the same ring of a nitrogen containing compound corresponding
to component c) of appellants’ claimed composition. Appellants
further state that the fact that oxyl-substituted components c)
are not exemplified does not negate the fact that such compounds
are suitable for the claimed compositions.
We note that the initial burden of presenting a prima facie
case of unpatentability on any ground rests with the examiner.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). Additionally, if the scope of the invention
sought to be patented can be determined from the language of the
claims with a reasonable degree of certainty, then the claims
fulfill the requirements of 35 U.S.C. 112, second paragraph.
In re Wiggins, 488 F.2d 538, 541-2, 179 USPQ 421, 423 (CCPA
1973).
Here, the examiner does recognize that the “oxygen” should
be a radical, for example, an oxyl. The references discussed by
12
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007