Appeal No. 95-0878
Application 07/921,820
It is reasonable to infer from this illustration that the structural formula for a “polyoxazoline” and a “linear
polyethyleneimine” are, in fact, the same and that there is no difference the chemical formulas between
“polyoxazoline” and “linear polyethyleneimine.” However, appellants’ original disclosure appears to
indicate “polyoxazoline” and “linear polyethyleneimine” are two separate and distinct polymers. On page
7, line 3 quoted supra, appellants refer to “polyoxazolines, linear polyethyleneimine polymers, or mixtures
thereof” (underscoring added). In addition, the examiner made a restriction requirement, in the first Office
action on the merits, based on the cyclic and linear relationship which he believed made “polyoxazoline”
and “linear polyethyleneimine” separate and distinct polymers. Thus, the term “polyoxazolines” as used in
appellants’ claim 1 is indeterminent since it is not clear whether the terms “polyoxazoline” and “linear
polyethyleneimine” mean the same thing or whether they represent different polymers with different chemical
formulas or structures.
The resolution of the issues raised by the 35 U.S.C. § 102 and 112 rejections made by the
examiner depends, to a large extent, on interpreting the meaning of the term “polyoxazolines” as set forth
in claim 1. However, for the aforementioned reasons, the meaning of the term, and therefore the metes and
bounds appealed claims, cannot be ascertained. Under these circumstances, any determination of whether
claims 1, 4, 6-15 and 17-20 are anticipated by Fuller or JP 4-202345 can only be based upon conjecture
and supposition. Such is not a proper basis for making determinations under 35 U.S.C. §§ 102 or 103.
In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). As the court in In re Wilson,
424 F.2d 1382, 1385, 165 USPQ, 494, 496 (CCPA 1970) stated:
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