Appeal 2006-0990
Application 10/209,369
inherency, in a manner sufficient to have placed a person of ordinary skill in
the art in possession thereof. See, e.g., In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Contrary to the position of the
majority of this panel (see above pp. 3-4 and 9), I am of the view that facts
apparent from the record cannot be overlooked in considering whether the
Examiner has established a prima facie case of anticipation as a matter of
fact.
The plain language of claim 1 specifies a sulfonated aliphatic-
aromatic copolyetherester polymer comprising at least (1) the stated mole
percent of any aromatic dicarboxylic acid residue and of any aliphatic
dicarboxylic acid residue based only on 100% of the moles of diacid residue
present in the polymer; (2) the stated mole percent of a residue of a member
of a Markush group of certain lower alkyl glycols and a poly(alkylene
ether)glycol residue based only on 100% of the total moles of glycol residue
present in the polymer; and (3) the stated mole percent of any sulfonate
component residue based on 100% of the total moles of all residues in the
polymer as a whole. In the context of the claim, the term residue has its
customary meaning in the art of a moiety derived from a particular
monomer.
Indeed, the Specification makes clear that “the mole percentages are
directed to the relative amounts of the respective diacid residue and gycol
[sic, glycol] residue structures present in the final polymeric compound”
(Specification 10:22-25; see also Br. 2:7-8). However, there is no limitation
in claim 1 with respect to the total mole percent of all dicarboxylic acid
residues and the total mole percent of all glycol residues in the polymer as a
whole, and I find no disclosure in this respect in the Specification. Thus,
12
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013