Appeal No. 2003-0061
Application No. 09/611,109
and methylene has only two bonds, it is not possible to
substitute a methylene group with two oxo groups.
It is noteworthy that appellants have not contested the
examiner's reasoning. Indeed, appellants agree with the examiner
that "replacing 'N' for 'CH ' creates an inoperative embodiment"2
(page 4 of Brief, second paragraph), and that a species
possessing two oxo groups "creating 6 bonds to carbon cannot
exist" (page 7 of Brief, second paragraph). In essence, it is
appellants' argument that one of ordinary skill in the art would
know that methylene groups cannot be replaced by N or with two
oxo groups. According to appellants, one of ordinary skill in
the art would understand, in light of the specification and state
of the prior art, that methylene is substituted by "N alkyl" or
"NH," not N, and that only one oxo group can be optionally
substituted for a methylene group.
Appellants' argument would be appropriate if the ground of
rejection was under the first paragraph of 35 U.S.C. § 112, i.e.,
appellants' argument addresses why one of ordinary skill in the
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