Appeal No. 2001-1045 Page 7
Application No. 09/178,594
3. Description of substituents on X and Y
Also on the subject of written description, the examiner rejected claims
15-19 because the specification does not adequately described the recited
substituents on the optionally substituted X and Y moieties. See the Examiner’s
Answer, pages 5-6. The examiner specifically pointed to the recitation in claim
15 that the X and Y groups can be substituted with a carboxyl, thiocarboxyl,
ester, or thioester group.
Appellants argue that “[o]n page 17 of applicants’ specification at lines 3 et
seq., a wide variety of substituents are cited which can be present. While it may
not be possible that each and every combination of X and/or Y with the
substituent disclosed may exist chemically, it is respectfully submitted that this
should not be a bar to applicants defining X, Y and possible substituents in their
claims.” Appeal Brief, pages 4-5.
Again, we agree with the examiner. The specification lists possible
substituents for the X and Y moieties (pages 17-18). The specification states
that possible substituents for alkyl (including alkylthio and alkyloxy) groups
include carboxyl, ester, and thioester groups. Page 17, lines 6-15. The same
applies to possible substituents for alkenyl, alkenylthio, alkenyloxy, aralkyl,
aralkylthio, aralkyloxy, aryl, arylthio, aryloxy, amino, carbamoyl, carbamoyloxy,
imino-lower-alkyl, imino-lower-alkylamino, and amide moieties. See page 17,
line 16, to page 18, line 17. However, none of the possible substituents includes
the thiocarboxyl group recited in claim 15.
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