Appeal 2007-0686
Reexamination Control 90/004,812
Application 09/810,650
and September 26, 2006, respectively, and by the Examiner as set forth in
the Answer mailed July 26, 2006.
Appellants argue that they are entitled to 35 U.S.C. § 119 benefit of
the January 30, 1990 filing date of Japanese patent application 2-019614 (the
Japanese application3), thereby antedating Pawlowski as a reference and
rendering the rejections moot (Appeal Br. 18). The Examiner contends that
the Japanese application fails to provide adequate written support for the
subject matter of claims 8-11 (Answer 11-14). Therefore, the dispositive
question before us is whether the Japanese application provides an adequate
description of the particular species and the narrow subgenus of
diazodisulfone compounds recited in claims 8-11.
"The function of the description requirement is to ensure that the
inventor had possession, as of the filing date of the application relied on, of
the specific subject matter later claimed by him." In re Wertheim, 541 F.2d
257, 262, 191 USPQ 90, 96 (CCPA 1976).
The Japanese application discloses (sentence bridging 8-9)
photosensitive compounds represented by formula [I]
0R1 SO2CSO2R 20
║
N2
wherein R 1 2
10 and R are independently a C
0 1-10
straight-chain, branched or cyclic alkyl group, C
1-10
3 In this decision, we will refer to the certified English language translation
of Appellants' priority document made of record as part of the Appeal Brief
filed on January 28, 1999 as "the Japanese application."
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013