Appeal 2007-0693
Application 10/188,519
1 lack of enablement was before us, the Examiner failed to prove lack of
2 enablement because the Examiner did not undertake the requisite factual
3 inquiry to establish the need for undue experimentation to make and/or use
4 the invention. In re Wands, 858 F.2d 731, 735, 736-37, 8 USPQ2d 1400,
5 1402, 1404 (Fed. Cir. 1988).
6 The subject matter of claims 5, 10, 15, and 20 was expressly described
7 not only in the Specification, as originally filed, but also in original claim 5.
8 (Specification 5:22-31; original claim 5.) In re Gardner, 475 F.2d 1389,
9 1391, 177 USPQ 396, 397 (CCPA 1973)(“Claim 2, which apparently was an
10 original claim, in itself constituted a description in the original disclosure
11 equivalent in scope and identical in language of the total subject matter now
12 being claimed ... Nothing more is necessary for compliance with the written
13 description requirement with the first paragraph of 35 U.S.C. § 112.”)
14 For these reasons, we cannot say that the Examiner has established
15 lack of written description as to claims 5, 10, 15, and 20.
16
17
18 II. Definiteness: Claims 5, 10, 15, and 20
19 The Examiner’s position that claims 5, 10, 15, and 20 are indefinite is
20 based on the belief that these claims improperly broaden the claims from
21 which they depend because “[a] binder comprising –COO- Na+ or –COO- K+
22 groups is not encompassed by claims 1 and/or 11.” (Examiner’s Answer 3.)
23 Again, the Examiner’s position is not well founded.
24 The Specification clearly indicates to one skilled in the relevant art
25 that the term “acrylate” or “methacrylate,” which is a comonomer in the
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