Ex Parte Hayes - Page 12

                 Appeal 2006-0990                                                                                     
                 Application 10/209,369                                                                               
                 inherency, in a manner sufficient to have placed a person of ordinary skill in                       
                 the art in possession thereof.  See, e.g., In re Spada, 911 F.2d 705, 708,                           
                 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).  Contrary to the position of the                              
                 majority of this panel (see above pp. 3-4 and 9), I am of the view that facts                        
                 apparent from the record cannot be overlooked in considering whether the                             
                 Examiner has established a prima facie case of anticipation as a matter of                           
                 fact.                                                                                                
                        The plain language of claim 1 specifies a sulfonated aliphatic-                               
                 aromatic copolyetherester polymer comprising at least (1) the stated mole                            
                 percent of any aromatic dicarboxylic acid residue and of any aliphatic                               
                 dicarboxylic acid residue based only on 100% of the moles of diacid residue                          
                 present in the polymer;  (2) the stated mole percent of a residue of a member                        
                 of a Markush group of certain lower alkyl glycols and a poly(alkylene                                
                 ether)glycol residue based only on 100% of the total moles of glycol residue                         
                 present in the polymer;  and (3) the stated mole percent of any sulfonate                            
                 component residue based on 100% of the total moles of all residues in the                            
                 polymer as a whole.  In the context of the claim, the term residue has its                           
                 customary meaning in the art of a moiety derived from a particular                                   
                 monomer.                                                                                             
                        Indeed, the Specification makes clear that “the mole percentages are                          
                 directed to the relative amounts of the respective diacid residue and gycol                          
                 [sic, glycol] residue structures present in the final polymeric compound”                            
                 (Specification 10:22-25; see also Br. 2:7-8).  However, there is no limitation                       
                 in claim 1 with respect to the total mole percent of all dicarboxylic acid                           
                 residues and the total mole percent of all glycol residues in the polymer as a                       
                 whole, and I find no disclosure in this respect in the Specification.  Thus,                         

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