Appeal No. 2004-2079 Page 7
Application No. 09/754,958
According to appellants’ specification (page 7) formula II is defined as “A-B-D-C-
D'-E,” not A-B-D-C-D'-” as it appears in claim 17. Further, appellants’
specification (page 8) defines formula III as “A-B-D-E-D'-C,” not “A-B-D- and -D'-
C” as it appears in claim 17. The invention of claim 17 is drawn to a compound
comprising structure of formula II or of formula III, not fragments of the
compounds comprising these structures. In this regard, we recognize the
examiner’s assertion (Answer, page 10) that it is “unclear what is meant by the
open-ended nature of” formulas II and III. Specifically, the examiner directs
attention to the dangling “-” as it appears after moiety “D'” and moiety “D” in
formulas II and III, and before moiety “D'” in formula III.
According to appellants (Brief, page 7), “[t]he dashes on D and D' in the
formulas are points of attachment. This is not confusing to one in the chemical
arts.” To the contrary, on this record, these “dangling” dashes are quite
confusing for it is unclear from the claim, to what moieties “D” and “D'” attach.
See Answer, page 19, “it is simply unclear as to what these so-called “points of
attachment” are attaching.” According to formula II and III in appellants’
specification, moiety D and moiety D' attach to moiety “E.” Moiety E, however, is
not required in claim 17.
For the foregoing reasons, we affirm the rejection of claim 17 under 35
U.S.C. § 112, second paragraph as indefinite. As set forth above, claims 20 and
21 fall together with claim 17.
Claim 19
Further, we direct attention to claim 19, which depends from claim 17 and
makes reference to moiety “E”. We note that claim 19 refers to structures having
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007