Appeal No. 2006-1615
Application No. 10/311,307
d) at least one compound having at least one group reactive toward isocyanate groups
and having at least one acid group,
e) at least one basic compound for neutralizing or partially neutralizing the acid groups
of the compound d)
f) optionally at least one compound different form b), d) and e) and having only one
group reactive toward isocyanate groups,
g) optionally at least one polyisocyanate different from a),
h) at least one thermal initiator,
i) optionally, one or more further additives selected from the group consisting of
reactive diluents, photoinitiators and conventional coating additives, and
k) water.
Claims 1 through 9 and 13 through 21 stand rejected under 35 U.S.C. § 112, first paragraph
(written description).
Claims 1 through 9 and 13 through 21 stand rejected under 35 U.S.C. § 112, second paragraph
(indefiniteness).
OPINION
I. The 35 U.S.C. § 112, First Paragraph (written description) Rejection
The examiner’s position is that “[i]t is not seen where the instant specification discloses nor
describes how to make the instantly claimed component a) in which a carbonyl group or an oxygen
atom in the form of an ether function is bonded directly to the double bond.” Answer, page 3. The
examiner states that it would appear that the carbonyl of acrylates and ether of allyl ethers would be
bonded to the carbon participating in the double bond but not bonded to the double pond per se as for
example in a Michael addition reaction. Answer, page 3.
To satisfy the written description requirement of 35 U.S.C. § 112, first paragraph, the
disclosure of the application as originally filed must reasonably convey to those skilled in the
relevant art that the applicants, as of the filing date of the original application, had possession of the
claimed invention. In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996); In re
3
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