Appeal No. 2005-2257
Application No. 10/087,028
provided that the carbon atom bonded to the imino nitrogen atom
has at least two carbon atoms bound to it” (lines 4-7 on page
31). It is the appellant’s position that the aforequoted proviso
results in both R26 and R27 being a branched hydrocarbon at the
imino-bonded carbon atom whereas appealed claim 12 permits only 1
such substituent to be so branched. On the other hand, the
examiner argues that Hauptman’s proviso “does not necessarily
mean that the secondary carbon atom is branched” (answer, page
4). In this regard, the examiner explains that “a phenyl group
(as shown in Hauptman, page 88, formula 48) or a cyclohexyl group
with six identical secondary carbon atoms is not branched because
the bond connectivity of the carbon atoms are all linked in a
cyclic fashion destroying any branching” (answer, pages 4-5).
Thus, the pivotal determination in resolving this appeal is
whether the cyclic structure of the R26 and R27 phenyl substituents
taught by Hauptman (e.g., see item 48 on page 88) are properly
considered a branched structure or not. If the phenyl
substituents are considered branched structures as urged by
appellant, Hauptman’s compounds are excluded by the claim
12 proviso. If not as urged by the examiner, Hauptman’s
compounds fall within the scope of the appealed claims, thus
making the examiner’s finding of anticipation correct.
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