Appeal 2007-1941
Application 10/363,159
1 ANALYSIS
2 Applicant’s original written description and claims do not expressly
3 state that the composition is “not predominately asphalt.” And applicant has
4 not directed us to any portion of the original disclosure which recited this
5 limitation. However, the limitation need not be present in the identical
6 words. Cordis, 339 F.3d at 1364, 67 USPQ2d at 1855. Thus, we look to the
7 original disclosure to see if that disclosure guides the person skilled in the art
8 to the sub-genus of compositions which are “not predominantly asphalt.”
9 Fujikawa, 93 F.3d at 1570, 39 USPQ2d at 1904.
10 Upon reviewing the original disclosure we fail to see that it provides
11 blazemarks which would guide the person of ordinary skill in the art to a
12 composition including “at least less than 50% asphalt” as applicant defines
13 “not predominately asphalt.1” Ruschig, 379 F.2d at 994-95, 154 USPQ at
14 122. In other words, we hold that the original specification and claims
15 would not convey to a person skilled in the art that applicant had possession
16 of the subgenus of compositions which “was not predominately asphalt.”
17 Vas-Cath, 935 F.2d at 1563-64, 19 USPQ2d at 1117. Indeed, the original
18 specification is devoid of any suggestion of including asphalt in addition to
19 the copolymer and the rubberized compound in any amount, not to mention,
20 a less than predominate amount.
21 We recognize that applicant’s original disclosure is generic in that
22 both the original written description and claims appear to leave the mixture
23 of copolymer and rubberized compound open to the inclusion of additional
24 but unnamed components. Thus, for example Claim 1 states: “A
25 composition for sealing, paving or repairing surfaces, comprising: a mixture
1 See Paper titled “Response to Office Action Mailed 9-29-05,” entered
December 12, 2005, p. 3 for the definition of “not predominately asphalt.”
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