Appeal No. 2001-1045 Page 8
Application No. 09/178,594
Thus, the examiner has shown that Appellants are “claim[ing]
embodiments of the invention that are completely outside the scope of the
specification.” In re Alton, 76 F.3d at 1175, 37 USPQ2d at 1583. He has
therefore carried his burden of showing a prima facie lack of adequate written
description. Appellants have pointed to nothing in the specification literally
describing X and Y groups substituted with a thiocarbonyl substituent, nor have
they shown that those of skill in the art would have understood the specification
to show possession of such an embodiment. We therefore we affirm the
rejection of all the claims on this ground.
4. Description and definiteness of R3
Claim 15 defines the R3 group of the ester reactant as “a protective group
easily removed.” The examiner rejected the claims on the basis that the
specification lacks an adequate description of R3 as defined in the claims. He
noted that the specification defines R3 as follows:
The group represented by R3 is not particularly limited, only if it can
eliminate from the esterified carboxyl group represented by CO2R3
through hydrolysis or under conditions of the selective procedure
according to the type of esters, and its preferred examples include
those capable of forming the following esters: [a long list of esters],
etc.
Specification, page 13, line 13, to page 14, line 34.
The examiner noted that, in contrast to the specification’s disclosure that
the protective group must be removable by hydrolysis or some kind of “selective
procedure,” the claim encompasses any protective group that is “easily
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