Ex Parte Damman et al - Page 4

                Appeal No. 2006-2680                                                                            
                Application No. 10/710,187                                                                      

                paragraph [0018] of the Specification, and White2 (col. 1, line 10, through                     
                col. 3, line 8).  (Br. 3.)                                                                      
                       Thus, Appellants argue that, under the art-recognized definition,                        
                polyetherimides all have aromatic ethers, whereas the polyetherimide esters                     
                of Liu ‘380 lack aromatic ethers, having instead aromatic esters.  (Br. 3-4.)                   
                Appellants argue that Liu ‘380 does not use the term “polyetherimide as that                    
                term would be used in the art.  Simply because the prior patentees use a                        
                name that is to some extent misdescriptive cannot serve to convert the actual                   
                chemical compounds described therein into something that they are not.”                         
                (Br. 4.)                                                                                        
                       The Examiner responds that claim 1 encompasses the polyetherimide                        
                esters of Liu ‘380 because “the Liu patents disclose materials (referred to by                  
                Liu as a ‘polyetherimide ester’) containing at least imide and ether repeat                     
                units.”  (Answer 4.)  The Examiner further urges that neither the                               
                Encyclopedia of Polymer Science, nor White, nor Appellants’ specification,                      
                provides “anything purporting to be a definition of ‘polyetherimide.’”                          
                (Answer 5.)                                                                                     
                       “[T]he examiner bears the initial burden . . . of presenting a prima                     
                facie case of unpatentability. . . .  After evidence or argument is submitted                   
                by the applicant in response, patentability is determined on the totality of the                
                record, by a preponderance of evidence with due consideration to                                
                persuasiveness of argument.”  In re Oetiker, 977 F.2d 1443, 1445, 24                            
                USPQ2d 1443, 1444 (Fed. Cir. 1992).                                                             

                                                                                                               
                2 White et al., U.S. Patent 4,141,927, issued February 27, 1979.                                

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