ROSENQUIST v. SCHOLL et al - Page 17




               Patent Interference No. 103,812                                                                                  

                      chain and the the [sic] carboxylic acid group on the the [sic] compound labeled                           
                      "UV acid" on the attached page.                                                                           
                      The invention disclosure letter neither identifies the "UV acid" nor the polycarbonate                    
               resin composition.  Although reference is made to "the compound labeled 'UV acid' on the                         
               attached page" and "attachments" illustrating the test data or reduction to practice, those                      
               attachments were not provided by Rosenquist.                                                                     
                      To the extent that the letter does discuss the use of a carboxylic acid group as an                       
               endcapping agent for a polycarbonate resin, the count requires the endcapping agent to be                        
               chemically bound to the condensation product by an ester linkage through the acid substituent of                 
               the phenolic substituent of the endcapping molecule.  See Rosenquist patent claim 1.  The letter                 
               fails to indicate that an endcapped polycarbonate resin having this ester linkage was formed.  See               
               the second page of RX 9 ("Three routes [for making endcapped resins] are under investigation . .                 
               . .  Each of these routes should yield resin with end groups of the proposed structure.").  In fact,             
               the letter fails to establish that the "UV acid" endcapper was even made.  See the third page of                 
               RX 9 (the initial record of attempting to prepare the "UV acid" from commercially available                      
               Tinuvin 840, with the stated intention of reacting it with polycarbonate resin, is in a notebook                 
               dated June 21 and 23, 1992; the work was suspended but later resumed, apparently in July 1993).                  
                      In sum, the evidence of record, including the invention disclosure letter, fails to establish             
               that an endcapped polycarbonate resin was produced according to the process of the count.                        
               Therefore, the letter cannot serve as a contemporaneous recognition and appreciation of that fact.               



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