Appeal 2006-2269
Application 10/051,938
Appellant argues that the Specification, as filed, contained original
claims which recited esters based upon a mixture of carboxylic acids having
from 5 to 9 carbon atoms, and an incorporation-by-reference of US Patent
5,021,179 (henceforth indicated as Zehler ‘179) (Br. 6). Appellant contends
that his Specification at page 3, lines 16-26, contemplates mixtures of polyol
esters based upon various carboxylic acids, including mixtures of carboxylic
acids disclosed in Zehler ‘179 (Br. 6-7). Appellant contends that Zehler
‘179 describes esters based upon “monovalent and divalent acids” which
Appellant construes to mean monocarboxylic and dicarboxylic acids,
respectively (Br. 7). Appellant argues that mixtures of monocarboxylic and
dicarboxylic acids are described throughout Zehler ‘179 (Br. 7).
Appellant further argues that the Examiner inappropriately relies on
In re Smith, 458 F.2d 1389, 173 USPQ 679 (CCPA 1972) to support his
finding that the moncarboxylic and dicarboxylic acids claim features are not
supported (Br. 8). Appellant argues that the holding in Smith is not
applicable to the facts of the present appeal (Br. 9). Reasoning from the
holding in Smith, Appellant contends that the “presently claimed mixtures of
dicarboxylic acid and monocarboxylic acids are not a subgenus based upon a
disclosure of a single species within that subgenus” (Br. 9). Rather,
Appellant contends, the Specification “clearly contemplates the use of
divalent carboxylic acids with a variety of monocarboxylic acids and
mixtures thereof” (Br. 9).
Appellant argues that to find that he did not have possession of a
mixture of a divalent carboxylic acid and monovalent carboxylic acids based
on the disclosure of Zehler ‘179 would “require Appellant to literally
disclose every possible combination of monovalent and divalent carboxylic
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