Ex Parte Kumar et al - Page 2




             Appeal No. 2007-0744                                                                               
             Application No. 10/007,866                                                                         
                                                 DISCUSSION                                                     

             35 U.S.C. § 112, first paragraph                                                                   
                   Claim 36 stands rejected under 35 U.S.C. § 112, first paragraph for failing to               
             comply with the written description requirement.                                                   
                   The examiner contends that Appellants amended Claim 361 by incorporating into                
             the claim the text "said biodegradable oxidized cellulose ester having an acid number of           
             at least 133."   Answer, page 3.  The examiner argues that this amendment is not                   
             supported in the original specification.                                                           
                   Appellants point to Example 1, page 13, line 26, for support of this amendment to            
             claim 36.  Brief, page 5.  This portion of the specification states the starting material for      
             synthesis of the compound in the example has a carboxylic acid content of 13.7%.                   
             Appellants contend that Example 1 provides the acid content of the starting material and           
             "the resulting compound has a carboxylic acid content of 10.57%, which directly                    
             converts to an acid number of 133.9. (8/25/05 amendment, p. 10)."   Brief, page 5.                 
                   The examiner argues that the conversion of the acid number in Example 1 is                   
             insufficient documentation to support claim 36 because the instant specification does              
             not disclose the carboxylic acid content of the resulting compound thereof and does not            
             set forth the acid number of the resulting compound.  We agree.                                    




                                                                                                                
             1   Amendment filed August 25, 2005.                                                               
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