Appeal 2007-0292
Application 10/115,802
Specification disclosure does not expressly contain the claim 31 proviso
language. This belief is in error.
The Appellants correctly point out that the proviso merely narrows
claim 31 by excluding certain species of their disclosed compounds, and the
Examiner does not argue otherwise. Since claim 31 was descriptively
supported prior to the proviso amendment, it necessarily complies with the
written description requirement in its current form whereby it defines a more
narrow scope of species. Stated differently, Appellants' Specification,
having described the whole (i.e., all the claim 31 species prior to the proviso
amendment), necessarily described the part remaining (i.e., the more limited
species defined by present claim 31 with the proviso). In re Johnson,
558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977).
For this reason, we cannot sustain the § 112, first paragraph, rejection
of claims 31-42, 77, and 89.
The § 102 Rejection
An artisan would not at once envisage one of Appellants' claimed
compounds when viewing the general formula of Armand. See In re
Ruschig, 343 F.2d 965, 973-74, 145 USPQ 274, 281-82 (CCPA 1965);
compare In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA
1962). Instead, a claimed compound would be obtained only by selectively
picking and choosing from the large number of choices for the members and
stoichiometric coefficients of Armand's formula. See In re Arkley, 455 F.2d
586, 587, 172 USPQ 524, 526 (CCPA 1972) (an anticipatory reference must
clearly and unequivocally disclose the claimed compound or direct those
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013