Interference 105,039 Paper No. 28
Andree v. Klintz Page 22
Acting on behalf of the Director of the USPTO, we conclude
that this interference was improvidently declared as to Count 1,
and that there is no interference-in-fact between any of the
claims of Klintz currently designated as corresponding to Count 1
and any of the claims of Andree currently designated as
corresponding to Count 1.
Count 2 (Written -description of Claim 56)
Claim 56 is drawn to diazonium salts of compound I in which
the para-substituent is cyano and the meta-substituent is a
diazonium salt, (-N-_N)'X'-, where X' is halogen. (The superscript
"x" serves to distinguish the meta-moiety from the carbonyl
moieties represented by X' and X': it does not denote the
magnitude of the negative charge.) There are no Klintz original
claims directed to diazonium. salts. The sole disclosure appears
to be at page 73, in a section entitled "Meerwein alkylation of a
diazonium salt IXb.11 The meta-substituent in IXb is N2ý'
Andree argues that there is no adequate written description
for the subject matter of claim 56 because diazonium salt
compounds are described solely in terms of the
original broad genus, i.e., R1 = 'halogen, cyano, nitro
or trifluoromethyl,' and is not limited to cyano, in
particular. However, inasmuch as Andree has
demonstrated that para-cyano confers an unexpected
benefit, Klintz's claim 56 cannot be described by this
disclosure. Klintz's involved application does not
discuss diazonium salts at any other point and,
consequently, Klintz could not make a proper claim to
the same patentable invention as Andree's claim 5.
(Andree preliminary motion 1 at 24.)
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: November 3, 2007