Appeal 2007-3373
Application 10/477,363
1 Further, Appellants argue that dependent claims 4, 5 and 7
2 contain further limitations that clearly render them novel over
3 … Berg.
4
5 The argument is not an acceptable argument. Claim 4 has two
6 limitations. The argument fails to say which limitation is not described by
7 Berg. In any event, we believe the Examiner has a complete answer to
8 Ciba's "argument." See Examiner's Answer, page 9.
9 Claim 9
10 The following argument appears on page 7 of the Appeal Brief:
11 Further, claim 9 contains a further limitation of containing a
12 poly(ethylene glycol)monomethyl ether which is clearly not
13 anticipated by the cited art.
14
15 Unlike the argument with respect to claims 4-5 and 7, Ciba addresses
16 a specific limitation in claim 9. The Examiner's response to the argument
17 was (Examiner's Answer, pages 9-10):
18 Since dendrimers can include polyether and polyester and the
19 modifier compound can include esters of aliphatic carboxylic
20 acids, the limitation in the present claim 9 is obtained.
21
22 We have to agree with Ciba that the subject matter of claim 9 is not
23 described by Berg. A description of a genus is not a description of a
24 subgenus or species. Whether the subject matter of claim 9 would have been
25 obvious over Berg is a matter we leave for further consideration by the
26 Examiner.
12
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