Appeal No. 1998-3042
Application No. 08/310,657
Claims 39 and 50 define M as "one or more of acrylonitrile, styrene, acrylamide,
methacrylamide, methyl methacrylate, ethylene, propylene, butylenes, or butadiene."
These copolymers "can be halogenated to render them biocidal and therefore useful for
disinfection" (brief, para. bridging pp. 2-3).
BACKGROUND
According to appellants,
[c]laim 38 (which was later rewritten as claim 48) and claim 39 originally
recited a copolymer comprising a monomeric repeating unit, defined by a
recited structure, and "at least one other type of monomeric repeating unit."
[The disputed] ... language appeared in the claims in response to a rejection
under 35 U.S.C. § 112, second paragraph, that the "other type" monomer
language was indefinite. In that response, appellants amended the claims to
replace "other type monomeric repeating unit" with a "monomeric repeating
unit M." [Brief, p. 4.]
OPINION
According to the examiner,
[t]here is no support in the specification for the expression "wherein the
monomer M is copolymerizable with the monomer structure of the formula I,
II, III, IV, V, VI, VII, VIII, IX, or X without hindering the ability of the
monomeric structure of formula I, II, III, IV, V, VI, VII, VIII, IX or X of the cyclic
amine copolymer to be halogenated" (emphasis in the original, answer, p.
4).
The test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed subject matter,
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007