Appeal No. 2000-0599
Application No. 08/357,363
1367, 60 USPQ2d 1173, 1179 (Fed. Cir. 2001), (quoting Pall Corp. v. Micron Seps., 66
F.3d 1211, 1217, 36 USPQ2d 1225, 1229 (Fed. Cir. 1995)). In our view, Asubstantially
pure,@ as it appears in these claims, interpreted in light of the specification, reasonably
serves to describe the claimed subject matter to those of skill in the art.
According to the examiner, the spectroscopic data in claims 32 and 33 are Aof
unknown function, and hence, render[ ] the claim[s] indefinite.@ Answer, 15th page.
Having reviewed Example 4 of the specification (which describes acid hydrolysis of a
precursor compound; recrystallization to yield 9-(4-hydroxy-3-hydroxymethylbut-1-yl)
guanine; and analysis of the recrystallization product), in conjunction with the first
paragraph of the Appendix accompanying the Jarvest 3 declaration (which describes
the results of a re-analysis of the recrystallized product from Example 4), it is clear that,
with one exception, the only data reported in Example 4 and listed in the claims are
those associated with 9-(4-hydroxy-3-hydroxymethylbut-1-yl) guanine per se; data
associated with the impurities in the recrystallization product are reported in the
declaration, but excluded from the claims. The one exception is the negative limitation
in claim 33 regarding the absence of a Asubstantially detectable signal in the δ 7.1-7.4
region@ of the NMR spectrum. According to appellants, the absence of any signal in
this region indicates that the claimed compound is free of any significant quantities of [ ]
monobenzyl and dibenzyl ether contaminants.@ Brief, page 13. Thus, we agree with
the examiner that the spectroscopic data in the claims reflect Aintrinsic properties@ of 9-
(4-hydroxy-3-hydroxymethylbut-1-yl) guanine, and do not reflect either the presence or
absence of impurities (with the exception of the monobenzyl and dibenzyl ether
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