Appeal No. 1996-3980
Application 08/290,125
rejection under § 112, first paragraph, written description requirement, with respect to claims 1 through
3 and 5 through 9, 11, 20 through 22 and 24 through 27 and the ground of rejection of claim 4 under §
112, second paragraph.
Rather than reiterate the respective positions advanced by the examiner and appellants, we
refer to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
The ground of rejection of claims 1 through 9, 11, 20 through 22 and 24 through 27 under §
112, first paragraph, was described by the examiner as a “new matter rejection” (answer, page 3), and
thus we have considered it as involving the written description requirement of this statutory section. See
generally, Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir.
1991); In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 99 (CCPA 1976). With respect to §
112, first paragraph, written description requirement, the examiner must establish that, as a factual
matter, the claimed invention was prima facie not adequately described to one of ordinary skill in this
art by the disclosure in the specification at the time the application was filed. See generally, In re
Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996). In the present case, we
find that the examiner has established a prima facie case that the claimed invention encompassed by
claim 4 was not described to one of ordinary skill in this art by the disclosure at the time the application
was filed. The examiner points out that the phrase “polycarboxylic salts R-COOŻ? Na prepared from +
monomers of the formula R-COOŻ? Na , where R is a polymerizable monomer selected from the+
group consisting of an alkylene group or arylalkylene group” in claim 4, is not based on the original
application which contained the following disclosure “polycarboxylic salts R-COONa+, wherein R is
alkyl or arylalkyl group” at page 7, lines 14-15. We find no basis in the original application for the
amendment to page 7, lines 14-15, of the specification reflected in claim 4, including page 13, lines 1-4
2, of the specification pointed to by appellants in their brief (page 5). Accordingly, we find that, as a
matter of fact, appellants have not rebutted the examiner’s prima facie case with respect to claim 4,
and thus affirm this ground of rejection with respect to this claim.
4See the amendment of August 3, 1995 (Paper No. 6).
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