Appeal No. 1999-0981
Application 08/787,895
Creative Prods., 31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994), quoting
Orthokinetics Inc v. Safety Travel Chairs Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed.
Cir. 1986).
It is clear that the plain language of the claim specifies two layers, each of which
comprises a blend of a polymer or copolymer of propylene and a hydrocarbon resin, wherein the
hydrocarbon resin comprises “a thermoplastic resin of low molecular weight made from
relatively impure monomers that are derived from coal-tar fractions or petroleum distillates”
(emphasis supplied).
The examiner contends that the phrase specifying the “hydrocarbon resin” material is
indefinite because the italicized terms are “indefinite; it is not clear what is [sic] constitutes ‘low
molecular weight’ and ‘relatively impure monomers’” (answer, page 4). The examiner takes the
position that “appellant’s definition of the term ‘hydrocarbon resin’ in the specification is very
broad, and included [sic, includes] all polymeric resins consisting of hydrogen and carbon” (id.,
page 8, lines 8-9; see also page 6, last paragraph, page 9, lines 8-9; and page 10, lines 1-2).
We note here that the written description in the specification contains the following
disclosure:
“Hydrocarbon resin” (“HC” herein) and the like as used herein means resins made
by the polymerization of monomers composed of carbon and hydrogen only.
Thermoplastic resins of low molecular weight made from relatively impure monomers
derived from coal-tar fractions, petroleum distillates, etc. are also included. A
discussion of HC resins can be found e.g., in . . . [Bossaert] . . . . [Page 5, lines 4-10;
emphasis supplied.]
Appellant submits that the claim language complies with the requirements of the statute
because the definition of “hydrocarbon resin” in claim 14 is “a term of art in the chemical and
technical literature”), pointing to “Whittington’s Dictionary of Plastics, Third Edition, 1993” for
the quoted “dictionary definition”
[i]n the plastics industry, hydrocarbon resins are considered to be those thermoplastic
resins of low molecular weight made from relatively impure monomers that are
derived from coal-tar fractions, cracked-petroleum distillates, and turpentine. [Brief,
page 13.]
In this respect, appellant further contends that “The Encyclopedia of Polymer Science &
Engineering, Vol. 7, 1987, at page 758, contains a similar definition” (brief, page 13). Appellant
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