Appeal No. 2005-0846
Application No. 09/981,339
Wertheim, 541 F.2d at 265, 191 USPQ at 98; Blaser, 556 F.2d at
538, 194 USPQ at 125.1
REJECTION (2)
The rejection of all appealed claims under 35 U.S.C.
§ 102(e) or, in the alternative, under 35 U.S.C. § 103(a) in view
of Conroy is affirmed.
Conroy discloses a stabilizer composition for halogen -
containing polymers essentially as claimed,2 including a latent
(blocked) mercaptan, a metal-based stabilizer (e.g., a zinc
1Another relevant consideration relates to appellant’s
purpose for claiming a concentration range narrower than
originally disclosed. For if the range was narrowed to create a
patentable distinction over the prior art based upon a showing of
unexpected results within the narrower range, then the question
arises whether persons skilled in the art would recognize from
the disclosure of a broader range that appellant had possession,
as of the filing date of his application, of the patentably
distinct invention defined by the narrower range.
As stated in Wertheim, 541 F.2d at 265, 191 USPQ at 98,
where it is clear that the broad described range pertains to a
different invention than the narrower claimed range, then the
broader range does not describe the narrower range.
Since this particular question has not been explicitly
raised on appeal, and since the examiner has satisfied his
initial burden for establishing a lack of descriptive support, as
discussed supra, we find it unnecessary to resolve the question
discussed in this footnote.
2Appellant’s brief (page 8) stipulates that all of
appellant’s dependent claims stand or fall with the independent
claims for purposes of this appeal. Accordingly, we shall focus
our consideration on the three independent claims.
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