Ex parte REY et al.

Board of Patent Appeals and Interferences

May 21, 1999

08382120 (B.P.A.I. May. 21, 1999)

Application for patent filed January 10, 1995. 1
According to appellants, this application is a division
of Application 08/165,610, filed December 13, 1993, now
U.S. Patent 5,412,092,issued May 2, 1995, which is a
continuation-in-part of Application 08/052,434, filed
April 23, 1993, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today
(1) was not written for publication in a law journal
and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Allan W. Rey,
Purushotham Vemishetti,
and Roberto Droghini
____________
Appeal No. 97-2168
Application No. 08/382,1201
____________
ON BRIEF
____________
Before WINTERS, WILLIAM F. SMITH, and LORIN,
Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-2168
Application No. 08/382,120
2
This is an appeal under 35 U.S.C. § 134 from the
final
rejection of claims 10-12, 21 and 33, all the claims
pending in the application. Claims 33 is illustrative of
the subject matter on appeal and reads as follows:
A method for preparing a compound having the
formula
Wherein R is selected from the group consisting of:1
alkyl, halo-substituted alkyl, cycloalkyl, arylalkyl and
groups derived from carbohydrates containing a pyranosyl
or furanosyl ring; X is selected from O, N, S, C(O)O and
a direct bond; R is selected from the group consisting of2
aryl, substituted aryl, and mono- or bicyclic aromatic
groups having five to six atoms in each ring; and
“substituted aryl” means an aryl group bearing from one
to three same or different substituents selected from the
Appeal No. 97-2168
Application No. 08/382,120
3
group C alkyl, C alkoxy, hydroxy, trifluoromethyl and1-3 1-3
halogen, which process comprises subjecting a compound of
formula I to catalytic hydrogenolysis:
Claims 10-12, 21 and 33 are rejected under 35 U.S.C.
§ 112, first and second paragraphs. We reverse and make a
new ground of rejection under 37 CFR § 1.196(b).
The examiner has rejected the claims as indefinite
because claim 33 contains the following two phrases
(examiner’s answer, pp. 2 and 5):
Appeal No. 97-2168
Application No. 08/382,120
4
“groups derived from carbohydrates containing
a pyranosyl or furanosyl ring”, and,
“mono- or bicyclic aromatic groups having 5 to
6 atoms in each ring”.

The inquiry under the second paragraph of § 112 is
whether the claims particularly point out and distinctly
claim what appellants consider as their invention. This
is essentially a requirement for precision and
definiteness of claim language. In addressing this
requirement, with respect to the two phrases, the
examiner states that

“Because of the vagueness of ‘derived from’ it is
unclear what does or does not fall within the R1
definition” (examiner’s answer, p. 2, lines 19-
20), and
“‘mono- or bicyclic aromatic groups having 5 to 6
atoms in each ring’. . . is [also] indefinite, in
that it introduces the open ended ‘groups’, which
is open ended as to any substituents which might
be present” (specification, p. 5, lines 17-21).
The “definiteness of the language employed must be
analyzed - not in a vacuum, but always in light of the
Appeal No. 97-2168
Application No. 08/382,120
5
teachings of the prior art and of the particular
application disclosure as it would be interpreted by one
possessing the ordinary level of skill in the pertinent
art.” In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971). The specification not only refers to
“groups derived from carbohydrates containing a pyranosyl
or furanosyl ring” in defining carbohydrate derivatives
but provides examples (specification, p. 4, lines 33-36).
One of these derivatives is used in Example 25 (p. 35,
lines 28-29) to illustrate the invention. In light of
this, the recitation “derived from” is sufficiently
defined. While it is true that this term gives the
claims considerable breadth, breadth is not synonymous
with indefiniteness. See In re Gardner, 427 F.2d 786,
166 USPQ 138 (CCPA 1970). Regarding the use of the term
“groups”, when read in the context of the entire phrase,
and in view of the examples recited in the specification
(e.g., page 4, lines 29-32), the “groups” are those which
are mono- or bicyclic aromatic and have 5 or 6 atoms in
Appeal No. 97-2168
Application No. 08/382,120
6
each ring. The “word . . . has a reasonably precise
meaning and therefore does not render the claims
indefinite.” In re Wakefield, 422 F.2d 897, 904, 164
USPQ 636, 642 (CCPA 1970). With respect to substituents,
this may give the claims considerable breadth, but again
breadth is not synonymous with indefiniteness.

We therefore reverse the rejection under 35 U.S.C. §
112, second paragraph.
The examiner has also rejected claims 10, 12, 21 and
33 under 35 U.S.C. § 112, first paragraph “for lack of
support” (examiner’s answer, p. 5, line 14). The
examiner states:
“The original language of ‘heteroaryl’ was replaced
by the broader phrase ‘mono- or bicyclic aromatic
groups having 5 to 6 atoms in each ring’. This
specific phrase (which does not appear in the
specification) is broader than ‘heteroaryl’ in that
it doesn’t require that a heteroatom be present”
(examiner’s answer, p. 5 lines 16-20).
Appeal No. 97-2168
Application No. 08/382,120
7
In fact, literal support for the phrase can be found in
the specification at p. 4, lines 29-30. The problem with
this phrase is not a matter of written descriptive
support, therefore, but rather one of “distinctly
claiming the subject matter which the applicant regards
as his invention", 35 U.S.C. § 112. We will address that
below. The rejection under § 112, first paragraph is
reversed.
New Ground of Rejection under 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b), we make
the following new grounds of rejection.
Claims 10, 12, 21 and 33 are rejected under 35
U.S.C. § 112, second paragraph, as being indefinite. As
we see it, claim 33 is incomplete. The examiner
originally rejected the claims under § 112, second
paragraph, on the grounds that “heteroaryl” was self-
contradictory (first Office action, mailed November 9,
Appeal No. 97-2168
Application No. 08/382,120
“The ‘open-ended’ nature of groups is unclear. At page 4,2
lines 17-19, appellants state that ‘[a]ryl’ means a mono-
or bicyclic aromatic carbocyclic group. Since ‘carbocyclic’
refers to moieties containing only carbon and hydrogen, the
term ‘aromatic groups’ – if read in light of the
8
1995). In response, appellants amended the claims so
that “’heteroaryl’ [has] been clarified using the
recitations found at . . . page 4, lines 28+”
(appellants’ Response filed December 1, 1995, p. 4).
However, the phrase that was inserted in the claims -
“mono- or bicyclic aromatic groups having five or six
atoms in each ring” – is not the full recitation found in
the specification. It is missing the important
additional criterion “and having at least one ring
heteroatom selected from nitrogen, sulfur and oxygen”
(page 4, lines 28-32). Without this limitation, the
claims do not distinctly claim the subject matter which
appellants regard as their invention. We are not
persuaded that the recitation, in its currently shortened
form, further describes the claimed term “aryl”, as
appellants appear to suggest (brief, p. 7 ). The term2
Appeal No. 97-2168
Application No. 08/382,120
specification – cannot be ‘open-ended’.”
See the definitions of "aryl" set forth by the authorities3
listed in footnote 3 of In re Sus, 306 F.2d 494, 498, 134
USPQ 301, 304 (CCPA 1962).
“Irrespective of whether the term ‘aryl’ is restricted to4
an organic radical derived from an aromatic hydrocarbon by
the removal of one atom; e.g., phenyl from benzene, or
could be read as inclusive of the tolyl radical (CH C H M),3 6 4
it is believed apparent that the claims’ use of the three
terms ‘aryl’, aralkyl’ and alkaryl’ clearly indicates the
intended scope of the substituent groups.” Ex parte
Scherberich, 201 USPQ 397 (BPAI 1977).
9
“aryl” has a common and definite meaning which the3 4
specification does not controvert and that meaning does
not include groups with only 5-membered carbocyclic
rings. It is clear that R is defined as “selected from2
the group consisting of aryl, substituted aryl, and
heteroaryl” (specification, p. 3, lines 23-24) but that
is not how the claims now read. The inconsistency should
be clarified. This can be accomplished, and this
rejection overcome, by inserting the aforementioned
missing recitation.

Appeal No. 97-2168
Application No. 08/382,120
10
This decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197
(Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides
that “[a] new ground of rejection shall not be considered
final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to
the new ground of rejection to avoid termination of
proceedings (37 CFR § 1.197(c)) as to the rejected
claims:
Submit an appropriate amendment of
the claims so rejected or a showing
of facts relating to the claims so
rejected, or both, and have the
matter reconsidered by the examiner,
in which event the application will
be remanded to the examiner. . . .
Request that the application be
Appeal No. 97-2168
Application No. 08/382,120
11
Reheard under § 1.197(b) by the
Board of Patent Appeals and
Interferences upon the same
record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED - 37 CFR § 1.196(b)
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HUBERT C. LORIN )
Administrative Patent Judge )

Appeal No. 97-2168
Application No. 08/382,120
12
HCL/dal
Appeal No. 97-2168
Application No. 08/382,120
13
SANDRA M. NOLAN
BRISTOL-MYERS SQUIBB CO.
5 RESEARCH PARKWAY
WALLINGFORD, CT 06492