Ex Parte McNamara et al - Page 12



               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.                                                                                    




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