Appeal No. 2002-2063
Application No. 09/635,093
the polyisocyanate component, have low viscosity and good
viscosity reducing effect, not volatilize easily (remain present
until firing), substitute for some or all of the high boiling
aromatic solvent, not evolve toxic vapors on firing, and have good
compatibility with the thick phenolic resin and the solvent for
the phenolic resin. (Appeal Brief, page 15, lines 4-14). While
these may all be desirable traits, these arguments are not
directed specifically to a feature which is found in, or tied to,
a specific claim limitation, and consequently are of little
probative or persuasive value.
We acknowledge that these properties and goals may have value
and be commercially successful, however, there simply is no nexus
to claim 12 as written. It is the applicants’ burden to precisely
define the invention, not the PTO’s. In re Morris, 127 F.3d 1048,
1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997). In choosing to
define the invention by the relative amounts of high-boiling
aromatic hydrocarbons, the appellants have sacrificed much
evidential clarity, especially while making arguments relating to
the reduction in emissions from such hydrocarbons, which
hydrocarbons are not technically required in the claims although a
relative proportion are.
The appellants also state that “[p]roportions are not
necessary to define this invention” (Appeal Brief, page 16, lines
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