Appeal No. 2006-1065
Application No. 10/296,231
We consider first the examiner’s rejection under § 112, first paragraph,
description requirement. We agree with the examiner that the original specification fails
to provide descriptive support for the claim recitation “the particulate hydrophobic
polymers contain no active substance entrapped therein, distributed throughout, absorbed
or adsorbed.” As appreciated by appellants, whether the claim recitation has original
descriptive support in the specification is a question of fact. In the present case, we are in
agreement with the examiner that the facts do not support appellants’ contention that they
had possession, at the time of filing the present application, of the concept that the
claimed polymers contain no active substance entrapped therein, distributed throughout,
absorbed or adsorbed. In re Anderson, 471 F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA
1973).
Our review of the original specification finds no indication that appellants
reasonably conveyed to one of ordinary skill in the art that they possessed the inventive
concept that the disclosed polymers have no association with active substances.
Appellants rely upon the citation of U.S. Patent No. 5,476,660 at page 1 of the present
specification, lines 35-42 for evidence that they consider their polymers to be different
from the carrier particles of the cited patent. However, the specification reference to U.S.
Patent No. 5,476,660 simply describes the prior art use of polymeric retention agents
having active substances embedded therein, but the specification provides absolutely no
disclosure that the present invention involves a departure from using the polymeric
particles as carrier particles. Indeed, it is just as, if not more so, reasonable to conclude
that the polymeric particles of the present invention are intended to be employed as such
carrier particles.
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