Appeal No. 2006-0440
Application No. 10/291,933
application to the substrate. Although the appellants could
have clearly avoided the prior art by narrowing the scope of the
appealed claims during prosecution, they chose not to do so. In
re Bigio, 381 F.3d at 1324, 72 USPQ2d at 1211 (“[A] patent
applicant has the opportunity and responsibility to remove any
ambiguity in claim term meaning by amending the application.”);
In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed.
Cir. 1997)(“It is the applicants’ burden to precisely define the
invention, not the PTO’s.”).
Belatedly in the reply brief (2-4), the appellants rely on
the example discussed in the specification at 19-21 as evidence
of unexpected results. Specifically, the example is limited to
a single comparison of the claimed invention against the prior
art using Adiprene RFA 1004 (an MDI polyester polyurethane
prepolymer from Crompton Corp.) and Adiprene RFB 4170 (an
ester/amine based curative from Crompton Corp.) under specific
conditions. According to the specification, the invention
provided a “high quality, bubble free roll cover...with a
thickness of about 2.3 cm,” while a method representative of
Grimm’s method provided a roll with “some bubbles.”
We find this evidence unconvincing for a number of reasons.
Unlike the specific method described in the example, the
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