Appeal No. 2006-2693 Page 4
Application No. 09/000/330
Claim 30 depends from claim 28 and recites that the alicyclic compound is
norbornene and the alpha-olefin is ethylene.
2. New Matter
The examiner has rejected claims 16, 21, 24, 25, 28, and 35 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description requirement. The
examiner notes that “[t]he originally filed specification at page 4, lines 32-34, discloses a
copolymer of an alpha olefin with ‘an alicyclic compound having a double bond, such as
cyclohexene or norbornene.’” Examiner’s Answer, page 5. However, the examiner
argues that “[t]here is no disclosure of the broadly recited subgeneric species ‘alicyclic
compound having one double bond’ as recited in the instant claims. Nor is there any
appreciation in the originally filed specification for the broadly recited ‘alicyclic
compound having one double bond.’” Id. The examiner states that “the disclosure of a
‘compound having a double bond,’ when given its broadest and reasonable
interpretation, is not limited to compounds having one double bond, but includes
compounds having . . . more double bonds than one double bond. . . . The originally
filed specification does not expressly define the term ‘a double bond’ as referring to only
one double bond.” Id., at pages 10-11.
Appellants argue that the teaching in the specification at page 4, lines 32-34,
provides adequate support for the recitation of “one double bond.” In particular,
Appellants argue that “[t]he term ‘a’ indicates only one, therefore the phrase compound
having a double bond means that there is only one double bond. The phrase ‘such as
cyclohexene and norbornene’ evidences that only one double bond is preferred
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