Appeal No. 1999-1008
Application 08/713,905
limitation, the products must have a hydrolyzable chlorine content of less than 1000 parts per
million (ppm), that is, no more than 999 ppm. The claim does not contain any limitations
specifying the manner in which the claimed products are made, and thus is not a product-by-
process claim. See, e.g., In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
It is clear that the claimed invention is not described in ipsis verbis in the written
description in the specification even though the examiner does not so state. It is also clear that
the examiner has considered the entire written description in the specification in arriving at the
position that the disclosure of specification Example 1 and the alleged corresponding
specification Comparative Example alone “are not sufficient to provide support” for the subject
claim limitation, noting that “appellants’ only disclosure of hydrolyzable chlorine contents for
instant invention stems from the examples; however, the disclosed amounts within the examples
range from 24 ppm to 48 ppm” (answer, pages 3-4). The examiner finds no support for the claim
limitation in the disclosure in the specification that no mixture prepared in the Comparative
Example had a hydrolyzable chlorine content below 0.1% or in the “statements in the
specification pertaining to the prior art and the hydrolyzable chlorine content of the prior art”
products (answer, pages 3-4), thus referring to the paragraph bridging pages 1 and 2, and page 3,
lines 22-26, of the specification.
In view of the prima facie case made out by the examiner, we have again reviewed all of
the facts in the evidence of record bearing on the issue of written description, giving due
consideration to the weight of appellants’ arguments. See Alton, 76 F.3d at 1175-76, 37 USPQ2d
at 1583-84. Appellants (brief, pages 3-4; see also reply brief, pages 2-3) point to specific parts of
the written description in the specification which involve discussions of the prior art
(specification, paragraph bridging pages 1-2), objects of the invention (id., page 3, lines 17-18
and 22-25), the Examples and the Comparative Example, and submit that
[o]ne skill in the art reading Appellants’ specification in its entirety would therefore
readily appreciate that Appellants had indeed invented a process for producing
isocyanates which do not have the high hydrolyzable chlorine contents known to be
problematic in prior art processes (i.e., hydrolyzable chlorine contents of 0.1% or
greater) at the time the present application was filed. [Brief, page 4; emphasis
supplied.]
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