Appeal 2006-2269
Application 10/051,938
Examiner states that there is no indication that the instant invention at the
time of filing was composed of anything other than mono-carboxylic acid
(Answer 5).
Appellant replies that Zehler ‘179 must be read as if its entire
disclosure were copied verbatim into the original disclosure of the subject
Specification (Reply Br. 2-3). Appellant contends that one of ordinary skill
in the art would have recognized that the combinations of monocarboxylic
and dicarboxylic acids discussed in Zehler ‘179 could be used in conjunction
with any of the embodiments disclosed in Appellant’s Specification (Reply
Br. 3).
We have considered all of Appellant’s arguments and find them
unpersuasive. We agree with the Examiner’s ultimate conclusion that claims
46-48, 62-64 and 76 are properly rejected under §112, 1st paragraph as
violating the written description requirement.
We note that Appellant’s statement of incorporation by reference of
the Zehler ‘179 patent on page 3 of his Specification indicates that the patent
is being incorporated for its disclosure of the method for making polyol
esters (i.e., “The esters according to the invention can be made by the
method described in U.S. patent 5,021,179, the entire contents of which is
incorporated by reference” (emphasis added)) (Specification 3, ll. 20-22).
Therefore, we find that, by Appellant’s own words, it is the method, not the
particular compositions disclosed by Zehler ‘179, that Appellant seeks to
incorporate. For this reason, Appellant’s arguments directed to the various
disclosures of Zehler ‘179 related to the “monovalent” and “divalent” acids
are not persuasive.
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