Appeal No. 1999-0494
Application 08/482,768
compounds are suitable for use in the treatment method of the present invention.
Specification, page 32.
DISCUSSION
1. Rejection under 35 U.S.C. § 112, fourth paragraph
The examiner's reasoning in support of this rejection is:
The claims relate to the intended use of the composition. Therefore, they are not
a proper definition of the composition as they are not limiting of the composition
per se.
Examiner's Answer, page 3.
The examiner's statement of the rejection is all but incomprehensible and lacks
logic. First, it is not clear why claim 13, an independent claim, is subject to this
rejection. Nor is it clear why claim 15 is subject to this rejection as that claim is limited
to a Markush group of specific compounds useful in the composition of claim 13.
It appears that the examiner's concern in terms of proper dependency is limited
to claim 14. But neither statement by the examiner explains why claim 14 does not
serve to further limit claim 13. On its face, claim 14 is directed to a narrower subgenus
of compounds than those required by claim 13 in that the compounds of claim 14,
besides possessing the property required by claim 13, must also inhibit formation of
amyloid fibrils by the activity described in claim 14.
While not clear from the statement of the rejection, it may be the examiner's
concern that not all of the compounds described by appellant in the specification
possess the properties required by both claims 13 and 14. In other words, appellant
may not have described in the specification compounds possessing the property of
claim 13 but not the property of claim 14. If so, those question would be properly raised
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007