(dissenting).
I respectfully suggest that the quandary in which the majority finds itself is purely of its own making and wholly unnecessary. Applicants for patents have complete freedom in phrasing their claims. If the language they employ is of such a nature as to run afoul of the prior art, as is clearly the case here, then the Patent Office is obliged to reject such claims. They have properly done so here.
The examiner, the board, and appellants agree that the claims call for a compound. Despite that accord by those presumably skilled in this particular art, the majority feels obliged to disregard that unanimity of view and substitute instead our own limited knowledge of advanced chemistry.
I would remind my colleagues that Congress has seen fit to restrict the jurisdiction of this court. 35 U.S.C. § 144 clearly states that our decisions “shall be confined to the points set forth in the reasons of appeal.” Since the parties agree what the claims cover, this court has no authority to go so far afield as it is doing here. ■
The majority concludes by saying:
“Our decision is not to be construed as meaning that we consider the claims on appeal to be patentable as presently drawn. These claims should, it seems to us, be reviewed to insure compliance with 35 U.S.C. 112. See In re Citron, 251 F.2d 619, 45 C.C.P.A. 773”.
I agree with the first sentence since our decisions should never be construed as deciding any issues other than those raised in the reasons of appeal. However, this court has no business suggesting to the Patent Office that it review matters not raised in the reasons of appeal. If Citron stands for such a proposition, the quicker it is overruled the better for the litigants, the Patent Office and this court.