Appeal No. 2001-1101 Page 5
Application No. 08/932,834
entitled "GROUPING OF THE CLAIMS." Applicants ask that we consider two groups of
claims separately, stating that "[c]ompound claims 1, 2, 4, 6, 7, 9, 10, and 12-14 are
patentable regardless of whether pharmaceutical composition claims 15, 18-21 and 23-
27 are patentable" (Paper No. 42, Section VII). That section of the Appeal Brief,
however, makes little sense. First, applicants have not set forth a grouping of claims
"for each ground of rejection which appellant contests" as required by 37 CFR §
1.192(c)(7) (1999). Second, applicants have omitted claim 16 from their grouping of
claims. Third, applicants' statement to the contrary, notwithstanding, claims 20, 21, and
23 through 27 are drawn to compounds, not pharmaceutical compositions.
Nonetheless, applicants' error in grouping claims for purposes of this appeal may
be viewed as "harmless error" in view of our disposition of each ground of rejection
discussed infra.
35 U.S.C. § 112, Second Paragraph
As stated in In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989): "An essential purpose of patent examination is to fashion claims that are pre-
cise, clear, correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process." In the
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