Appeal No. 2004-2079 Page 8
Application No. 09/754,958
the formulas “A-B-C-D'-E,” “A-B-E-C,” “A-B-E-D'-C,” and “A-B-D-E-C.” None of
these structures conforms to the claimed structure of formulas II or III, which are
A-B-D-C-D'- (Formula II)
A-B-D- and -D'-C (Formula III).
As the examiner explains (Answer, page 20), “the structures recited in claim 19
do not appear to fall within the limitations of claim 17.”
Initially, we agree with appellants’ assertion (Brief, page 7), “a dependent
claim can further limit an element recited in a prior claim.” We also agree with
appellants’ assertion (id.), “a dependent claim can also add an element which
has not been recited in a prior claim, as long as said claim is not limited by
language such as ‘consisting of’.” We disagree, however, that either of these
principles apply to the facts before us on this record. For clarity, we direct
attention to the structure “A-B-C-D'-E” as it appears in appellants’ claim 19. This
structure is distinct from the structures presented in claim 17, from which claim
19 depends. This is not an instance where an additional moiety was added to
the
D
end
A B D C D' A B + C D'
of one of the structures presented in claim 17. For example, an “E” moiety added
to the end of the compound comprising the structure of formula II resulting in a
compound having the structure – “A-B-D-C-D'-E”. To the contrary, to arrive at
the structure “A-B-C-D'-E” as it appears in appellants’ claim 19, the structures
presented in claim 17 would have to be modified. For example, using the
structure of formula II as it appears in claim 17, the structure would first have to
be split to remove moiety “D”:
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007