Appeal No. 2005-0181
Application No. 09/781,631
of anticipation, and the burden shifts to appellant to show that
Tang does not satisfy the properties as recited in claims 31 and
in claim 32. It is well settled that the Patent Office can
require appellants to prove that a function or property relied
upon for novelty is not possessed by prior art compounds
otherwise meeting the limitations of the claims. In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In view of the above, we therefore affirm the rejection of
31-33, 35, 37, 38, 42, 45 and 46 as being anticipated by Tang.
VI. The 35 U.S.C. § 102(e)/103 rejections of claims 41 and 43
over Tang
We consider claims 41 and 43 in this rejection.
As discussed, supra, we affirmed the rejection of involving
claim 41 under 35 U.S.C. § 112, second paragraph
(indefiniteness). As such, the metes and bounds of appealed
claims 41 and 43 are unclear and indefinite to the extent that it
is impossible to ascertain the propriety of the grounds of
rejection of appealed claims 41 and 43 under 35 U.S.C.
§ 102(e)/103 over Tang. See In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970); In re Steele, 305 F.2d 859, 862-
63, 134 USPQ 292, 295-96 (CCPA 1962).
In view of the above, we therefore reverse, pro forma, the
35 U.S.C. § 102(e)/103 rejection of claims 41 and 43 as being
anticipated/obvious over Tang.
VII. The 35 U.S.C. § 103 rejection of claims 34, 36, 39, 40, 44,
47-70 as being obvious over Tang
We consider claims 48, 52 and 54 in this rejection.4
4 We limit our consideration to only those claims in which appellants
argued with a reasonable degree of specificity. As such, claims 48,
52, and 54 are selected for consideration in this rejection. We refer
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