Appeal No. 2003-1926 Page 3
Application No. 09/095,842
OPINION
Enablement
The problem with regard to enablement is one of claim scope. As pointed out by the
Examiner, the specification indicates that a non-ionic, non-fluorine-containing surfactant is
critical or essential to the practice of the invention (Answer, p. 3), yet the claims do not require
the presence of a non-ionic, non-fluorine-containing surfactant.
The Examiner’s conclusion is consistent with both what is stated in the specification and
with what Appellants argued in the parent application (Serial No. 08/612, 865, now issued as
U.S. Patent 5,925,705) as to the general understanding of those of ordinary skill in the art. As
stated in the argument presented in the parent application: “[a]t the time of applicants’ invention
(the filing date of the priority application), the general understanding [of] those skilled in the art
was that the particle size of the emulsion-polymerized PVdF particle became smaller with
increase of amount of surfactant and with decrease of polymer (solid) content.” (Response under
37 C.F.R. § 1.115 filed May 2, 1997 in Application Serial No. 08/612,865). According to
Appellants, this fact is discussed in the specification when discussing the prior publications.
Appellants pointed to the following disclosures:
(1) A disclosure within Koubunishi Ronbu Shu, Vol. 36, No. 11 (1979) that states that
“when a large amount of surfactants of various kinds is used in emulsion polymerization,
particles of a polymer latex become smaller” (specification, p. 2, ll. 17-24 in both the instant
application and the parent application); and
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