Appeal No. 95-0878
Application 07/921,820
poly(stearoylethyleneimine) by reacting linear polyethyleneimine with stearoyl chloride (Example X). In
response to appellants’ argument, the examiner states that the claims were rejected
... because the specification is unclear as to if the linear formula of the compound in claim
3 is in fact a polyoxazoline. As clearly shown in the prior art of JP 4-202345 a
polyoxazoline contains a heterocyclic ring. As shown in any chemical dictionary an
oxazoline contains a heterocyclic ring. Thus there is confusion as to if the non-cyclic
structures in claim 3 can properly be called polyoxazolines. The Applicant has not
supplied any evidence to convince the Examiner that one skilled in the art would consider
a polyoxazoline having both a cyclic and a non-cyclic heterocycle. The Examiner notes
original independent claim 2, now canceled, reads on a toner composition of
“polyoxazolines or substituted linear polyethyleneimine resin particles.” It is the Examiner
[sic, Examiner’s] position the compounds shown in the formula in claim 3 read on the latter
definition not polyoxazoline. However the Examiner restricted claims 1 and 2 to separate
the different toner compositions, one having polyoxazoline resin and the other substituted
linear polyethyleneimine resin, (see paragraphs 15-18 of Paper No. 3) and the Applicant
elected the invention of Group I drawn to polyoxazolines and for which the Examiner
searched cyclic polyoxazoline not non-cyclic linear polyethyleneimines. The Applicant can
not [sic, cannot] combine these terms to obtain a linear polyoxazoline as it is not enabled
in the specification.
The test for determining compliance with the enablement requirement of the first paragraph of 35
U.S.C. § 112 is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in
the art to make and use the claimed invention without undue experimentation. In re Scarbrough, 500
F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974). The examiner has put into question whether the
skilled artisan would be able to obtain a polyoxazoline having a linear chemical formula without resorting
to undue experimentation.
Before we can make any determination of the examiner’s rejection under the first paragraph of 35
U.S.C. § 112, the claims must be analyzed to determine whether the claims define the claimed subject
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