Appeal No. 2000-0022
Application No. 08/888,173
undoubtedly a species within the generic formula of Kautsky, and
hence the case of In re Baird applies to the instant case.
(reply brief, page 2).
Appellants further argue that Kautsky teaches away from
their claimed 2 to 4 carbon unit alkylene groups. For example,
appellants point out that all of the examples of Kautsky are
directed to a terminal alkylene group of 6 carbons. (brief, page
6). Appellants also point out that the preferred compounds of
Kautsky, discussed in column 2, and shown in Tables II and III,
have long alkylene chains. Hence, appellants argue that the
preferences of Kautsky lead away from their presently claimed
invention. (brief, page 7).
We agree with appellants’ interpretation of the Kautsky
disclosure. That is, while Kautsky sets forth a generic
compound that encompasses appellants’ claimed invention, the
particularly exemplified or particularly described compounds are
directed to long chain terminal alkylene groups. In this
regard, we disagree with the examiner’s rebuttal statement made
on page 6 of the answer. On page 6 of the answer, the examiner
incorrectly states that one compound in Table II of Kautsky has
2 carbon atoms. However, that compound (indicated at item (9)
in Table II) is a compound not representative of Kautsky’s
invention. Hence, the examiner’s understanding of Kautsky’s
disclosure (other than the generic formula at columns 1 and 2)
is not correct. We therefore agree with appellants that
Kautsky’s disclosure as a whole is preferably directed to long
chain terminal alkylene groups, in particular, having 6 carbon
atoms.
We further find that appellants’ formula in claim 13
requires a minimum of four N atoms and an alkylene group at each
end having 2 to 4 carbon atoms. Such a selection is not evident
8
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