Ex Parte Damman et al - Page 6

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

                       In this case the Examiner essentially urges that, based on its plain                     
                meaning, the term “polyetherimide” encompasses any polymer containing a                         
                plurality of ether moieties and a plurality of imide moieties.  (Answer 4.)                     
                However, the Examiner has not provided any evidence to show that one                            
                skilled in the art would interpret the term “polyetherimide” in that manner.                    
                       In contrast, the Encyclopedia of Polymer Science provides evidence                       
                that one skilled in the art would interpret the term “polyetherimide” to mean                   
                those polymers containing successive aromatic ether bonds made from a                           
                condensation reaction of bisphenols and dinitrobisimides.  In reviewing Liu                     
                ‘380 and the other references of record, we see nothing suggesting that one                     
                skilled in the art would consider the meaning of “polyetherimide” supplied                      
                in the Encyclopedia of Polymer Science to be incorrect or overly narrow.                        
                       Therefore, a preponderance of the evidence does not support the                          
                Examiner’s position that the term “polyetherimide” in claim 1 encompasses                       
                any polymer that contains a plurality of ether moieties and a plurality of                      
                imide moieties.  Rather, the weight of the evidence shows that one skilled in                   
                the art would have interpreted the term “polyetherimide” to encompass                           
                polymers containing successive aromatic ether bonds made from a                                 
                condensation reaction of bisphenols and dinitrobisimides.                                       
                       None of the disclosed polyetherimide esters disclosed by Liu ‘380 is a                   
                condensation product of bisphenols and dinitrobisimides, nor do any of Liu                      
                ‘380’s polyetherimide esters contain successive aromatic ether moieties.                        
                Rather, Liu ‘380’s polyetherimide esters are                                                    
                             the reaction products of:                                                          
                             (i) at least one diol;                                                             
                             (ii) at least one dicarboxylic acid or its ester forming                           

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