Appeal No. 2006-0483
Application 09/860,272
in the art, the claim in fact sets out and circumscribe a particular area with a reasonable degree of
precision and particularity. Thus, claim 1 complies with 35 U.S.C. § 112, second paragraph.
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971). Indeed, the examiner
entered this ground of rejection because of appellants’ limited view of the polymers
encompassed by the claim (answer, e.g., page 4), as evinced by the kinds of the polymers
disclosed in the references applied by the examiner and appellants’ arguments with respect
thereto (brief and reply brief in entirety). In this respect, it is well settled that applicants’ mere
intent as to the scope of the claimed invention does not so limit the scope of a claim which is
otherwise definite when construed in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Cormany, 476 F.2d 998, 1000-02, 177 USPQ 450, 451-53
(CCPA 1973).5
Accordingly, we reverse the ground of rejection of claims 1 through 4, 7 through 19,
23 through 25 and 27 through 31 stand rejected under 35 U.S.C. § 112, second paragraph.
Turning now to the grounds of rejection based on prior art, we first consider the grounds
of rejection under § 102(b) and § 103(a) based on Mercurio ‘795, which grounds appellants
argue as a group (brief, pages 6-7; reply brief, pages 4-5).6 Appellants submit that Mercurio
‘795 “describes a coating composition containing packed polymeric particles that fuse together
upon heating . . . thereby preventing sound dissipation properties” (brief, pages 6-7). Appellants
argue that “[t]o the extent that an intermediate product of the Mercurio process includes a packed
array of particles, those particles do not possess the claimed phase segregation,” contending that
“[a] single desired Tg demonstrates that the monomers of Mercurio do not form regions of
differing Tg,” pointing to col. 8, ll. 8-9, of the reference (id., page 7).
The examiner responds that Mercurio ‘795 prepares the particles disclosed therein in the
same manner as appellants, pointing out that the use of different monomers would result in
5 Conflicts between appellants’ intended invention and the actual scope of the claim are
addressed under 35 U.S.C. § 112, second paragraph, on the basis of whether the claim is
“claiming the subject matter which applicant regards as his invention.” See Cormany, supra;
see also Zletz, 893 F.2d at 321-22, 13 USPQ2d at 1322 (citing In re Priest, 582 F.2d 33, 37,
199 USPQ 11, 15 (CCPA 1978)).
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007