Appeal 2007-1177
Application 10/733,740
descriptive support in Appellants’ Specification. Appellants’ arguments to
the contrary notwithstanding, we agree with this assessment.
Initially, we note that there is no dispute that the original Specification
provides no ipsis verbis disclosure of “an unbound homogeneous mixture”
of the first and second constituents. Consequently, once the Examiner sets
forth a reasonable basis why the Specification does not describe the concept
embodied by the new claim language, it is Appellants’ burden to establish
that one of ordinary skill in the art would understand the original
Specification to reasonably convey the concept of an unbound homogeneous
mixture of the two constituents.
We do not disagree with Appellants’ statement that “the term
‘unbound’ means that the constituents are not held in physical combination”
(principal Br. 6, last sentence), and Appellants’ reference the Specification
disclosure at page 4, lines 7-9 which reads “[t]he two constituents are mixed
together to form a homogenous mixture prior to spraying, such as by ball
milling or by wet chemical mixing” (principal Br. 7, third para.). However,
Appellants have not factually supported their contention that one of ordinary
skill in the art would readily understand that the constituents are unbound
after such processing. There is no evidence of record that ball mixing and
wet chemical mixing of the claimed constituents result in a composition,
especially a homogenous one, whose constituents are not held or bound
together to some degree. Certainly, it is reasonable to presume that the
claimed constituents are held together, or bound, in composition by the
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