Appeal No. 2005-1076
Application No. 10/047,941
claim 147 limitation that "L is a branched or straight chain
aliphatic group, a cyclic aliphatic group, a divalent aryl group,
or a polymeric group." Appellants maintain that "a person of
skill in the art would recognize the moiety L as recited in claim
134 is supported by the instant disclosure at, for example,
pg. 10 lines 1-17" (page 5 of Brief, first paragraph). However,
as properly noted by the examiner, the sentence bridging pages 9
and 10 of the specification states "L can be any divalent
branched or straight chain aliphatic group having from 1-20
carbon atoms, so long as it does not interfere with the
polymerization or biodegradation reactions of the polymer"
(emphasis added). There is nothing that follows in the
subsequent disclosure at page 10, lines 1-17, as cited by
appellants, that broadens moiety L such as to include more than
20 carbon atoms, a cyclic aliphatic group, a divalent aryl group,
or a polymeric group. Appellants have not explained how the
cited portion of the specification supports the claim
recitations, and the relevancy of the cited passage with respect
to the examiner's rejections escapes us. As for appellants'
argument that there is sufficient guidance in the specification,
at pages 38-45, to enable a person of ordinary skill in the art
to make polymers where L is as recited in claims 134 and 147, we
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