Appeal No. 2006-2693 Page 5
Application No. 09/000/330
because both cyclohexene and norbornene have only one double bond.” Appeal Brief,
page 7.
We conclude that the specification provides adequate written description for an
alicyclic compound having one double bond. As noted above, the specification
describes “an alicyclic compound having a double bond, such as cyclohexene or
norbornene.” Page 4, lines 32-34. As alluded to by the examiner, unless a more limited
construction is indicated, the article “a” is construed in a claim to mean “one or more.”
KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356, 55 USPQ2d 1835, 1839
(Fed. Cir. 2000). However, the fact that the recitation of “a double bond” is generally
construed in a claim to mean “one or more double bonds” does not mean that the
specification does not describe a compound having only one double bond.
In the present case, we agree with Appellants that the specification demonstrates
that Appellants were in possession of the concept of alicyclic compounds having only
one double bond, particularly in view of the fact that the two examples of alicyclic
compounds following the recitation of “a double bond” have only one double bond.
Thus, we conclude that the specification provides adequate written description for an
alicyclic compound having one double bond. We therefore reverse the rejection of
claims 16, 21, 24, 25, 28, and 35 under 35 U.S.C. § 112, first paragraph.
3. Obviousness
The examiner has rejected claims 16, 21, 24, 26-30, and 35 under 35 U.S.C.
§ 103 as obvious over Yoshikawa1 in view of Minami,2 as evidenced by two other
1 Yoshikawa et al., U.S. Patent No. 5,292,609, issued March 8, 1994.
2 Minami et al., U.S. Patent No. 5,179,171, issued January 12, 1993.
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