Appeal No. 2003-2146 Page 4
Application No. 09/546,143
Claim 25 stands rejected under 35 U.S.C. § 102(e) as anticipated by
Barbier.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Barbier.
We reverse.
DISCUSSION
THE REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH:
The claims are directed to a compound selected from the group consisting
of compounds of a specified formula wherein one of the substituents, R4, set
forth in the specified formula is an amino-protecting group. According to the
examiner (Answer, page 4), the “claims recite the limitation of ‘amino protecting
group’ which has no description in the specification other than ‘tert.-
butoxycarbonyl’ as a sole representative of said group. Thus, one skilled in the
art cannot ascertain what other groups can be considered as an
‘amino[-]protecting group’.” We note, however, while the examiner asserts (id.)
that the specification describes “tert.-butoxycarbonyl” as a sole representative of
an “amino-protecting group,” the examiner later finds (Answer, bridging sentence,
pages 4-5), the specification provides an enabling description of tert-butyl ester,
tert-butyl carboxylate, and tert-butoxycarbonyl as amino-protecting groups within
the scope of R4 as set forth in appellants’ claimed invention.
For their part, appellants assert (Brief, page 4), “[t]he term ‘amino-
protecting group’, as used in the rejected claims, is well-known in the art to which
this invention belongs, organic synthesis.” In support of this assertion appellants
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