Appeal No. 2006-1065
Application No. 10/296,231
Appellants also maintain that “[t]he composition described at page 20, lines 19-37
can consist of 0.05–40% by weight of the above-discussed cationically modified,
particulate, hydrophobic polymers and 99.95–60% by weight of water [which] is further
evidence of possession of such particulate polymers containing no active substance
contained therein (page 2 of Reply Brief, penultimate paragraph). We find this argument
unpersuasive because the relevant section of the original specification broadly describes a
large class of compositions that may comprise as much as 80% of a wide variety of
customary additives and as much as 20% of various salts, in addition to the particulate
polymers and water. The fact that it is possible for one of ordinary skill in the art to ferret
out from this extensive class of polymers those which have no active substance entrapped
therein, distributed throughout, absorbed or adsorbed falls far short, in our view, of a
description of the claimed invention within the meaning of § 112, first paragraph. This is
particularly so since appellants have failed to define the compounds and materials which
fall within the penumbra of the recited “active substance.”
Appellants also cite case law in support of their position (see page 10 of principal
brief). However, the precedential value of prior cases regarding the issue at hand is
extremely limited since each case must be decided based on its own particular set of
facts. In re Edwards, 568 F.2d 1349, 196 USPQ 465 (CCPA 1978). Here, we are
convinced that appellants’ claimed negative limitation introduces a new concept that was
not reasonably conveyed to one of ordinary skill in the art at the time of filing the present
application. Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) (The express exclusion
of certain elements in the claim implies the permissible inclusion of all other elements
and materials not expressly excluded).
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