Appeal No. 1999-1158
Application No. 08/687,427
The section 112, first paragraph, rejection is based on the
examiner’s belief that the subject matter defined by claim 8
“wherein the polymer does not contain ethylene monomers” does
not comply with the written description requirement. However,
page 2 of the subject specification as well as original claim 1
(and pending claim 1 on appeal) clearly disclose a polymer
composed of up to 100% by weight of monomers which do not
include ethylene monomers. This disclosure would convey to the
artisan that the appellants, on the application filing date, had
possession of polymers embraced by appealed claim 8 wherein the
polymers are composed of 100% by weight of non-ethylene
monomers. Thus, in applying the above noted test to the facts
of this appeal, we are led to the determination that claim 8
complies with the written description requirement of section
112.
It follows that we cannot sustain the examiner’s rejection
of claim 8 under the first paragraph of 35 U.S.C. section 112.
We also cannot sustain any of the examiner’s section 103
rejections. This is because the Young patent, which is the
primary reference in each of these rejections, explicitly
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