Appeal No. 2001-1946 Page 6
Application No. 08/874,463
the separate stereoisomers of the instant invention. It is only in the
Specification of the instant Application that a method for producing
Appellants' claimed compounds is disclosed. [Paper No. 10, page 7]
The examiner's response, that the PTO "has already allowed claims 5-7 and 9-11
directed to the particular processes for preparing [applicants'] stereoisomers" (Paper
No. 11, page 5, lines 6 through 8) does not counter applicants' argument, and amounts
to a non-sequitur. As stated in In re Hoeksema, 399 F.2d 269, 274, 158 USPQ 596,
601 (CCPA 1968):
if the prior art of record fails to disclose or render obvious a method for
making a claimed compound, at the time the invention was made, it may
not be legally concluded that the compound itself is in the possession of
the public. In this context, we say that the absence of a known or obvious
process for making the claimed compounds overcomes a presumption
that the compounds are obvious, based on close relationships between
their structures and those of prior art compounds. [Footnote omitted].
One further matter warrants attention. As stated in 35 U.S.C. § 112, fourth
paragraph:
Subject to the following paragraph, a claim in dependent form shall
contain a reference to a claim previously set forth and then specify a
further limitation of the subject matter claimed. A claim in dependent form
shall be construed to incorporate by reference all the limitations of the
claim to which it refers.
Claim 4 in this application, which depends from claim 1, is manifestly improper because
it does not "specify a further limitation of the subject matter claimed." Rather, claim 4
removes the limitation of "an agronomically acceptable carrier" recited in claim 1. Claim
4 defines a compound, i.e., "the compound of the composition of claim 1." On return of
this application to the Examining Corps, we recommend that applicants and the
examiner cooperate to correct the impropriety in dependant claim 4 noted in these
remarks.
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