Appeal 2006-2739
Application 09/918,584
which include hydrophilic groups. The Specification immediately conveys
to one of ordinary skill in the ink jet ink art the knowledge that Appellants
invented inks including water-soluble hyperbranched polymers containing
hydrophilic groups in the backbone and the Examiner has not presented
evidence sufficient to show that those of ordinary skill in the art would think
otherwise.
In conclusion, we find that the Examiner has failed to establish a lack
of adequate written descriptive support for “water-soluble” and
“hydrophilic” as those terms are used in claim 1.
The Objection under 37 C.F.R. § 1.75(c)
The Examiner objected to claims 11-13 under 37 C.F.R. § 1.75(c) on
the grounds that these claims are of improper dependent form because they
fail to further limit the subject matter of a previous claim. Appellants
contend that the objection is reviewable on appeal because the objection
should have been made as a rejection under 35 U.S.C. § 112, ¶ 2.
35 U.S.C. § 134(a) states that “[a]n applicant for a patent, any of
whose claims has been twice rejected, may appeal from the decision of the
primary examiner to the Board of Patent Appeals and Interferences.”
(emphasis added). 35 U.S.C. § 132 specifically separates objections and
requirements from rejections in its statement that “[w]henever, on
examination, any claim for a patent is rejected, or any objection or
requirement made, the Director shall notify the applicant thereof.”
Objections and requirements are not subject to appeal, they are petitionable
matters. 37 C.F.R. § 1.181 (2006).
Claims 11-13 have not been rejected, they have been objected to on
the basis that they are in improper form. Such an objection is properly the
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