Appeal No. 94-3359
Application 07/941,566
words used by appellants in their claims to describe their
polymeric compounds' ultimate utility (developers) does not
negate the fact that appellants' claimed 1,3-substituted units
must necessarily have the same properties as the identical units
disclosed in the prior art. We note that appellants do not
assert that their claims do not embrace 1,3-substituted moieties
on the polymer or that they did not intend to claim polymers
bearing 1,3-substituted moieties on the polymeric backbone.
Indeed, claims 5 and 6(5), which claim the 1,2-, and 1,4-
dihydroxysubstituted species are considered to be evidence that
appellants intended to broadly claim their compounds, including
the 1,3-dihydroxy substituted species.
The compounds disclosed by Scullard may be incorporated
in photographic elements, including black-and-white elements
(column 4, lines 25 through 31 and column 5, lines 20 through
22). The resorcinol-containing polymers are described as non-
diffusing (column 1, lines 49 through 52). It is hornbook patent
law that an anticipatory reference does not require any statement
for a particular utility let alone the utility claimed by
applicants so long as what is being claimed is described in the
reference relied on and the reference relied on describes how to
make the subject matter described or it would have been known by
a person of ordinary skill how to make the subject matter
18
Page: Previous 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 Next
Last modified: November 3, 2007