Appeal No. 2000-0599
Application No. 08/357,363
contaminants). Nevertheless, we do not agree that the recitations of spectroscopic
properties render the claims indefinite. In our view, the recitations are merely
superfluous.
Accordingly, the rejection of claims 32, 33, 45 and 46 under 35 U.S.C. ' 112,
second paragraph, is reversed.
II. Written Description
According to the examiner, the term Ahaving substantially no detectable signal in
the δ 7.1 - 7.4 region@ in claim 33 lacks description in the specification. Answer, 18th
page. The examiner states that A it is assumed that what appellants really mean is that
they claim a sample which is sufficiently pure not to have any signals in that region,@
Aeven though, of course, that is not the way the claim is actually written (Id.), adding
that A[i]f appellants were to submit a high resolution NMR of the material in example 4,
and there were in fact no detectable signals in that region, this rejection would vanish@
(Id., 19th page). Nevertheless, appellants have provided a re-analysis of the actual
material produced in Example 4 of the specification (see the Appendices of the Jarvest
3 and 4 declarations), identifying the so-called Anon-characterizing signals,@ which
account for the percentage of impurities found in that sample, and none fall in the δ 7.1
- 7.4 region. While we agree with the examiner=s assessment that that the data recited
in claim 33 have no bearing on the overall purity of what is claimed, we believe that
appellants, through Example 4, have adequate basis for the negative limitation in claim
33. Thus, the rejection of claim 33 as lacking adequate written descriptive support
cannot be sustained on this basis.
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