Appeal No. 1996-0191
Application 08/001,697
exemplified specific ranges that “any effective amount of cure catalyst of ‘at least 0.01%’ could be
employed in the
present invention” (brief, page 13). The examiner responds that “there is no substantiation for an
amount of catalyst in excess of the 2.0%” and that one of ordinary skill in art “could not ascertain the
maximum level . . . because the broad description of ‘amounts effective to accelerate cure’ is contingent
on the cure temperature which is not defined” (answer, pages 10-11). We must agree with appellants
because we find that one of ordinary skill in this art would in fact recognize that the disclosure of an
amount of cure catalyst “effective to accelerate cure at the temperature employed” coupled with the
range specified in the specification as an exemplary embodiment establishes that the amount of catalyst
can be “at least about 0.01%” and without upper limit, thus describing the invention defined by the
claims. See In re Wertheim, 541 F.2d 257, 265, 191 USPQ 90, 99 (CCPA 1976). Indeed, whether
one of ordinary skill in this art could “ascertain the maximum level” of cure catalyst is an issue arising
under the enablement requirement of § 112, first paragraph, and has no bearing on whether that person
would recognize in the disclosure a description of the invention defined by the claims. See, e.g., Alton,
76 F.3d at 1175, 37 USPQ2d at 1581.
We will also not sustain the ground of rejection of claims 5, 10 through 12, 14 through 19, 33
and 34 under 35 U.S.C. § 103 over Macholdt et al. (Macholdt) and Iwasawa et al. (Iwasawa) and
Wooten et al. (Wooten) in view of Japanese Patent No. 58-146582 (Kajiura) and Akkapeddi et al.
(Akkapeddi). Contrary to appellants’ contention (brief, page 9), Kajiura specifically discloses tris-5
pyrrolidonyl triazine and we find that one of ordinary skill in this art would have reasonably inferred6
that this compound would homo-polymerize through a ring opening reaction involving the pyrrolidonyl
5The references are listed at page 3 of the answer. Wooten is relied on by the examiner even though
not recited in the statement of the rejection in the answer (page 4) in view of the inclusion of this
reference in the discussion of the ground of rejection (id., pages 4-6 and 7-10). We refer in our opinion
to the translation of Kajiura prepared for the PTO by FLS, Inc. in November, 1993. We note that a
translation of this reference prepared by Polygot Language Service is also in the file and apparently was
submitted by appellants.
6Kajiura names this compound “2,4,6-tris(N-(azacyclopentane-2-onyl))-1,3,5-triazine” (page 5, line
8).
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