Appeal No. 2003-2139 Page 9
Application No. 09/812,945
GROUNDS OF REJECTION
Initially, we note from a review of Paper No. 4, mailed November 6, 2001
that the examiner required appellants to elect a single disclosed invention, and a
single disclosed species of (a) compound, and (b) disorder, for prosecution on
the merits. Appellants, in turn, elected the invention defined by claims 1-46, 7-
phenyl-2,4,6-hepta-trienoylhyroxamic acid as the elected compound, and cancer
as the elected disorder. See Paper No. 4, bridging paragraph, pages 3-4; Paper
No. 5, page 1. Accordingly, we limit our consideration of this record to
appellants’ elected species, and we take no position respecting the patentability
of appellants’ claimed method as it may relate to the remaining, non-elected
species. Cf. Ex parte Ohsaka, 2 USPQ2d 1460 (BPAI 1987).
Claims 1, 2, 4-7, 10, 12, 17, 18, 40-46 stand rejected under 35 U.S.C.
§ 112, first paragraph, as being based on an insufficient disclosure to support or
enable the full scope of the claimed invention.
Claims 1, 2, 4-7, 10, 12, 17, 18, 40-46 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Richon and Marks.
We reverse.
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