Appeal No. 2001-1045 Page 10
Application No. 09/178,594
been able to reasonably determine their metes and bounds in the context they
are used.”).
Here, we agree with the examiner that the specification provides no
standard for distinguishing protective groups that are “easily removed” from other
protective groups. The only discussion of the R3 protective group in the
specification is the passage on page 13 quoted above. That discussion sheds no
light on what makes a protective group “easily removed.” The specification does
not indicate, for example, that the property of being eliminated via hydrolysis or a
“selective procedure” is the defining characteristic of easily removed protective
groups, or whether easily removed protective groups are a subgenus of those
discussed on page 13-14. In short, the specification provides those skilled in the
art with no hint as to how to distinguish the easily removed protective groups
recited in the claims from other protective groups.
Appellants argue that “one of ordinary skill in the art to which this invention
pertains, would be aware that a wide selection of R groups could be employed as
long as they do not adversely affect the substitution reactions.” Appeal Brief,
pages 3-4. Appellants also point to the above-quoted language from page 13 of
the specification, and argue that this passage “indicate[s] that the R3 group is not
particularly limited. . . . Applicants submit that in the absence of prior art and in
view of the large number of ester groups described, it would be unduly limiting to
be required to restrict the R3 group, particularly since it does not undergo any
change in the substitution reaction.” Appeal Brief, page 4.
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