Appeal No. 2001-1045 Page 6
Application No. 09/178,594
argue that the working examples show various reactive groups in the X and Y
positions. Appeal Brief, page 5.
These arguments are not persuasive. We have reviewed the portions of
the specification relied on by Appellants but we have not found a description of
carboxyl or thiocarboxyl groups at the X or Y positions. Pages 1 and 2 of the
specification are discussed above; they do not describe a carboxyl or
thiocarboxyl group as a possible X or Y moiety. Page 15 (starting at line 16 and
continuing to page 16, line 9) does indeed described “[p]referred examples of the
groups represented by X and Y.” Those groups, however, do not include
carboxyl groups or thiocarboxyl groups. Page 16, lines 10-15, states that “[t]hese
alkyl, alkenyl, aralkyl, [etc.] groups may be substituted in their individual groups
with one or more substituents, for example, . . . carboxyl group,” but a carboxyl-
substituted alkyl group (for example) is not the same as a carboxyl group per se.
Nor do any of the working examples pointed to by Appellants show X and Y
substituents that are either carboxyl (i.e., COOH) or thiocarboxyl (i.e., COSH)
groups.
Thus, Appellants have not shown that the specification describes the
claimed invention as including carboxyl or thiocarboxyl groups as possible X and
Y moieties, either in ipsis verbis or in terms that would be understood by those
skilled in the art as showing possession of such an invention. Appellants have
therefore not rebutted the examiner’s prima facie case of inadequate written
description. We therefore affirm the rejection of all the claims on this ground.
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