Appeal No. 2001-1045 Page 5
Application No. 09/178,594
Since we find the zinc plus copper compound catalyst to be adequately
described in the specification, we reverse the examiner’s first ground of rejection.
2. Description of the X and Y moieties
The examiner rejected claims 15-19 because the specification does not
adequately describe some of the groups included within the Markush group of
possible X and Y moieties on the ester reactant. See the Examiner’s Answer,
pages 4-5. The examiner specifically noted that the claims included carboxyl
groups and thiocarboxyl groups as possible X and Y moieties; the examiner
found that these groups in particular lacked adequate descriptive support.
We agree with the examiner on this point. The specification includes an
extensive list of possible X and Y moieties (page 1, line 36 to page 2, line 22) but
this list does not include carboxyl groups or thiocarboxyl groups. The examiner
has therefore carried his burden of showing prima facie lack of adequate written
description. See In re Alton, 76 F.3d at 1175, 37 USPQ2d at 1583: “If the
applicant claims embodiments of the invention that are completely outside the
scope of the specification, then the examiner . . . need only establish this fact to
make out a prima facie case.”
Appellants argue that the specification, at pages 1 and 2, states that X and
Y can be, inter alia, “substituted or unsubstituted ester groups [or] substituted or
unsubstituted thioester groups.” Appeal Brief, page 4. Appellants also argue
that on “pages 15 et seq., numerous preferred examples of the groups
represented by X and Y are set forth.” Appeal Brief, page 4. Finally, Appellants
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