Appeal No. 1996-0328
Application 08/060,891
556, 558, 148 USPQ 499, 501 (CCPA 1966) (affirming provisional double patenting rejection over claims
in a copending application on the merits). Had applicants asserted that the subject matter of claims 1-36
and 62 was patentably distinct from the subject matter of claims 1-36 of the copending application, the
issue would have been reviewable by both this board and the courts on judicial review. Applicants cannot
strip the board of its jurisdiction simply by failing to argue the merits. Accordingly, the provisional rejection
of claims 1, 7-22 and 26-36 is affirmed.
D. New Ground of rejection
Claim 36 is rejected, pursuant to 37 CFR § 1.196(b), as unpatentable under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the subject matter which applicants
regard as their invention. The claim requires a comparison between terpolymer films and copolymer films
having two monomers which are “similarly made.” One of ordinary skill in the art would not know from
this record what is meant by “similarly made.” The specification does not describe to one of ordinary skill
in the art what films are “similarly made.” The specification does not provide any standards for determining
the meaning of “similarly.” See, Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826,
221 USPQ 568, 574 (Fed. Cir. 1984) (when words of degree are used in a claim, the specification must
provide some standard for measuring the degree). Additionally, one having ordinary skill in the art
would not know which films to compare. For example, is a film made of a terpolymer of 80% ethylene,
10% 1-hexene and 10% 1-butene to be compared with a film made of 80% ethylene, and 20% 1-hexene
or 1-butene or with one made of 90% ethylene, and 10% 1-hexene or 1-butene. Because of the difference
in composition the “comparison” films would have different properties. The person having ordinary skill
in the art would be required to guess at which films are necessary for comparison. The person of ordinary
skill in the art would not know from this record how to do the comparison required by the claim.
25
Page: Previous 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 Next
Last modified: November 3, 2007