Appeal 2006-2269
Application 10/051,938
acids” (Br. 9). Appellant contends that he has specifically disclosed the
claimed mixture of monocarboxylic acids and that he has further disclosed,
via Zehler ‘179, the carboxylic acid component may include a dicarboxylic
acid (Br. 9). Based on these disclosures, Appellant argues that one of
ordinary skill in the art “would readily understand that the optional
dicarboxylic acid can be incorporated into any of the disclosed
monocarboxylic acid components or mixtures” (Br. 9).
The Examiner responds that Appellant’s “claims 46, 62 and 76 all
require a polyol ester having a polyol component comprising a mixture of
two or more C5, C6, C7, C8 and C9 linear mono-carboxylic acids, the
carboxylic acid component further comprising a di-carboxylic acid, and the
fluid having at least 80% biodegradability” (Answer 4). The Examiner
contends that the original disclosure fails to disclose this claimed
combination (Answer 4). Rather, the Examiner contends that “the mere
suggestion that esters according to the invention can be made by the method
described in the incorporated reference [Zehler ‘179] fails to support the
specific fluid composition in the instant claims” (Answer 4). While the
Examiner recognizes that Zehler ‘179 contemplates esters with monovalent
and divalent acid components, nevertheless, the Examiner maintains that
such disclosure does not support Appellant’s claim to “a carboxylic acid
component comprising a mixture of two or more C5, C6, C7, C8 and C9
linear mono-carboxylic acids . . . [with a] dicarboxylic acid” (Answer 4-5).
The Examiner indicates that Appellant’s original disclosure
(i.e., page 3, lines 1-5) specifies that the dampening fluid according to the
invention is comprised of polyol esters where the carboxylic acid component
is mono-carboxylic acid having about 5 to 18 carbon atoms (Answer 5). The
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013