Appeal No. 94-2078
Application 07/834,755
ordinary meaning unless appellant discloses a novel use of that term); Zletz, supra (“During patent
prosecution the pending claims must be interpreted as broadly as their terms reasonably allow.
When the applicant states the meaning that the claim terms are intended to have, the claims are
examined with that meaning, in order to achieve a complete exploration of the applicant’s
invention and its relation to the prior art.”). The transitional term “comprising” used in the
“improvement” clause merely specifies in this instance that the improvement includes at least the
step of forming the encapsulated mixture with a vinyl ester of fatty acids and the mercaptan
transfer agents per se followed by the step of adding or mixing the encapsulated mixture with any
other ingredients of the polymerization medium prior to the start of polymerization per se (see
specification, e.g., page 12, lines 3-7). See Exxon Chemical Patents Inc. v. Lubrizol Corp., 64
F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995).
We have compared appealed claim 12 as we have construed it above, with Kuwata5 taken
alone or combined with Chujo or with Uraneck. In doing so, we are led to the same teachings of
Kuwata as cited by a prior panel of this board in Appeal No. 88-2158 in the grandparent ‘203
application (Paper No. 17; see supra note 1) in considering the invention of appealed claim 1
therein which involved an “aqueous polymerization” process to obtain “copolymers of vinyl or
vinylidene halides and vinyl esters of fatty acids” wherein “the mercaptan is admixed with said
vinyl esters before adding said mercaptan to the polymerization medium, and wherein [as little as
0.03 part by weight] of said mercaptan is added in the form of a mixture with vinyl ester to the
polymerization medium prior to the start of the polymerization reaction” (decision, pages 1-2).
That panel found that certain disclosure of Kuwata6 “fairly suggests adding the mercapto chain
regulator to the polymerization medium in the form of a mixture containing the vinyl ester
monomer” and thus concluded that the act of “[c]ombining the mercaptan with the vinyl ester
monomer, etc., prior to initiating polymerization” renders the therein claimed invention obvious
since the “vinyl ester and mercaptan of Kuwata are clearly ‘mixed together’ prior to initiating
4 The answer is marked as “Paper No. 10” but is record in the file “contents” as “Paper No. 11.”
5 Kuwata and other references relied on by the examiner with respect to the grounds of rejection
are listed at page 2 of the answer. We refer to these references in our opinion by the name
associated therewith by the examiner.
6 See Kuwata, col. 11, lines 25-30, col. 12, lines 23-32 and col. 13, lines 43-55.
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