Appeal 2006-3252
Application 09/536,728
1 Patentability of claims 74-80 under § 112, ¶ 4
2 Claims 74-76 and 78-80 depend directly or indirectly from non-
3 involved Esser claim 21.
4 Esser claim 21 calls for an R1 that inter alia can be fluorine, bromine
5 and iodine (actually bromo, fluoro and iodo). Esser claim 73, which
6 depends from Esser claim 21, calls for an R1 that can be halogen. Halogen is
7 broader than fluoro, bromo and iodo, because halogen includes, e.g., chloro.
8 Accordingly, Esser claim 74 does not narrow the scope of Esser claim 21; in
9 fact, Esser claim 74 purports to broaden the scope of Esser claim 21.
10 The same is true of Esser claims 75-76 and 78-80. A dependent claim
11 which does not include all the limitations of the claim from which it depends
12 is not patentable under the fourth paragraph of 35 U.S.C. § 112. Pfizer, Inc.
13 v. Ranbaxy Laboratories Limited, 457 F.3d 1284, 1292, 79 USPQ2d 1583,
14 1590 (Fed. Cir. 2006) ("Although the district court was reluctant to find the
15 fourth paragraph of § 112 to be an invalidating provision, doing so does not
16 exalt form over substance. Rather, it is consistent with the overall statutory
17 scheme that requires applicants to satisfy certain requirements before
18 obtaining a patent, some of which are more procedural or technical than
19 others.")
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