formula (1) and/or (2). For example, Kumar provides the following comparison of claim 130
and its alleged support in the Kumar ‘958 application:
Kumar Claim 130 Kumar ‘958 Application
and m, n and p represent the numbers of The sum of m, n and p is 11 through 370,
groups contained in each polysiloxane group, which corresponds to y as defined on page 10,
m being an integer within a range of from 10 lines 10-15, as an integer of 5 or greater,
through 270, n being an integer within a range preferably about 10 to about 270, more
from 1 through 50, and p being an integer preferably 40 to 270.
within a range of from 0 through 50;
(Amendment Under 37 CFR 1.15 and Submission Under 37 CFR 1.607, Paper No. 13, p. 15).
Kumar’s explanation, however, appears insufficient. For example, the sum of m (upper limit
270), and n or p (upper limit 50) adds up to 320 as opposed to 370, i.e., formula (I) is the sum of
m+n and formula (II) is the sum of m+p. Moreover, Kumar’s explanation failed to identify how
one skilled in the art is guided to the sum of 11 through 320 for polymer (1)(lower and upper
limits m+n) and the sum of 10 through 320 for polymer (2)(lower and upper limits m+p) from a
specification that guides one skilled in the art to employ an integer of 5 or greater, preferably 10
to 270, more preferably 40 to 270. More importantly, Kumar did not explain how one skilled in
the art is guided to select the ratio of m/n (10-270/1-50) and m/p (10-270/0-50) from a
specification that merely refers to a single variable y. While it may been obvious to select the
appropriate ranges for m, n and p, "possession" of the invention requires describing the
invention, with all its claimed limitations, not that which makes it obvious. Lockwood, 107 F.3d
at 1571, 41 USPQ2d at 1966.
As the record is unclear as to the written descriptive support for claims 115-117, 120,
122-125, 128-136, 140-145 it is recommended that the examiner reject these claims under
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