Appeal No. 2001-1581 Page 2
Application No. 08/833,172
GROUNDS OF REJECTION1
Claims 1, 6, 7, and 12-14 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite in the recitation of the term “cycloheteroalkyl”.
Claims 1, 6, 7, and 12-14 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite in the definition of “R”, particularly the recitation of
the phrase “R can be joined together with the carbon to which it is attached to
form a 3 to 7 membered ring which may optionally be fused to a benzene ring” as
it appears in the claimed invention.
We affirm.
CLAIM GROUPING
According to appellant (Brief, page 5), “[a]ll of the rejected [c]laims 1, 6, 7
and 12 to 14 stand or fall together.” Since all claims stand or fall together, we
limit our discussion to representative independent claim 1. Claims 6, 7 and
12-14 will stand or fall together with claim 1. In re Young, 927 F.2d 588, 590, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991).
DISCUSSION
As set forth in Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d
1200, 1217, 18 USPQ2d 1016, 1030 (Fed. Cir. 1991):
The statute requires that “[t]he specification shall conclude
with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his
invention.” A decision as to whether a claim is invalid under this
provision requires a determination whether those skilled in the art
1 We note that the issue regarding the “missing left parenthesis in claim 1” as set forth at page 3 of
the Answer, was subsequently withdrawn. See Paper No. 19, mailed March 12, 2001.
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