… wherein at least one of the
bridging groups A, B and C
contains at least one
–CH(OH)- group which is not
alpha- to either of the
nitrogen atoms.
As appellant points out (Brief, page 5, emphasis original), “the only polyamines disclosed by the
patent (other than those disclosed in col. 17, lines 27-59 [2]) to be effective anti-diarrheals are those
… which contain at least one CH(OH) group in at least one of the bridging groups.” In contrast, in
appellant’s claimed invention none of the bridging groups contain CH(OH) groups. Brief, page 5. In
response, the examiner finds (Answer, page 4), since “claim 1 recites
a ‘…composition comprising… an efrective [sic] amount of a compound…’ [t]he instant comprising
language is open-ended and does not exclude the CH(OH) group of … [Bergeron].” In this regard,
we agree with appellant (Reply Brief, page 2),
the so-called “comprising language” does not modify the definition of the active
anti-diarrheal, i.e., the polyamine. The language of the claim defining the polyamine is
the structural formula (I) of claim 1 which, when read in conjunction with the “wherein”
clause appearing immediately thereafter, … excludes the CH(OH) group containing
polyamines disclosed by … [Bergeron] to be useful for the treatment of diarrhea.
Stated differently, the word “comprising” modifies the composition not the compound of formula I.
Thus the composition may comprise the compound of formula I and other ingredients, but the
compound itself has must be consistent with the requirements of formula I.
Nevertheless, appellant does not dispute that compounds 33 and 34, as set forth in Table 1
of Bergeron, “are embraced by the structural formulae of the rejected claims.” Brief, page 5.
Appellant, however, asserts (Brief, bridging paragraph, pages 5-6, emphasis removed), “there is no
disclosure in the reference that compounds 33 and 34 are anti-diarrheals. There is no disclosure in
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