Appeal NO. 1996-3683
Application 08/207,393
content are the same is not clear from the example. Suffice
it to say that the claims use the terminology "free carboxyl
groups" not percent carboxylation.
From all the above we are unable to ascertain to what the
term "free carboxyl group" in the claims refers. Because the
binders actually employed by the appellants appear to be
solutions or emulsions, it cannot be determined if the binders
which contain "free carboxyl groups" recited in the claims are
intended to embrace the "free carboxyl group" content based on
the weight of the proprietary solutions or emulsions or if the
binders having the "free carboxyl group" content claimed are
intended to be directed to the "free carboxyl group" content
of the actual chemical compounds which are ultimately
dissolved in solution or dispersed in an emulsion. Indeed
ethylene acrylic acid (a one-to-one adduct of ethylene and
acrylic acid) is about 45 percent by weight carboxylic acid
("free carboxyl group").
OTHER ISSUES
The written description requirement of 35 U.S.C. § 112,
first paragraph, is separate from the enablement requirement
found in the same provision of 35 U.S.C. § 112. In re Wilder,
736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984). In
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