Appeal No. 95-1872
Application 07/953,340
Our comments which follow with respect to the examiner’s rejection under 35 U.S.C. § 112 are primarily
for emphasis.
Rejection Under 35 U.S.C. § 112
The examiner objected to the specification and rejected claims 1 and 3-5 under the first paragraph
of 35 U.S.C. § 112 for failing to disclose the chemical identity of the polymeric sponge material. On page
3, lines 13-27 of the specification, appellant states:
The particulate mixed in the dielectric oil consists of a carrier and the electro-rheological
constituent, i.e. water in this case. The carrier is a micro sponge which is a polymeric bead
having a cross-linking density in excess of about 10%. The micro sponge is sold under the
trademarks “MICROSPONGE,” “POROSPONGE” and “COMMAND RELEASE.”[2]
One such micro sponge having 22% water by volume entrapped therein during
polymerization is available commercially from Advanced Polymer Systems, Inc., Redwood
City, CA, as Part No. CH-196-64-ME. The carrier is sized for suspension in the dielectric
oil and for free movement through any equipment filters that may be encountered during
processing. Accordingly, a safe range of carrier diameter that meets these criteria is
between 10-30 microns. The porous nature of the carrier allows the ratio of electro-
rheological constituent volume to overall particulate volume to be maximized.
The examiner acknowledges appellant’s disclosure on page 3 of the specification, but contends on page
3 of the Answer that
the description of this material [the micro sponge carrier] is limited to a disclosure of the
cross-linking density and the particle size; this information is not sufficient to enable one of
This sentence was added to the specification in response to the examiner’s first Office action on the2
merits. In the final rejection, the examiner objected to the sentence as being new matter. Although the examiner
required cancellation of the alleged new matter, the subject matter remains in the specification. The examiner did not
reject any of the claims on appeal based on the new matter objection. Accordingly, the new matter issue is not
before us for consideration. See Section 2163.05 of the Manual of Patent Examining Procedure, 6th Edition, Rev. 3,
July 1997.
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