Appeal 2006-2269
Application 10/051,938
preponderance of the evidence with due consideration to persuasiveness of
argument. Id. at 1585.
In light of the foregoing discussion, it is apparent that the totality of
the record demonstrates that Appellant has not met his burden of showing
that the claimed combination of monocarboxlic acids and dicarboxylic acid
was adequately described to one skilled in the art. Accordingly, the
Examiner’s rejection for lack of written description is sustained.
We affirm the Examiner’s rejection of claim 46-48, 62-64 and 76
under § 112, 1st paragraph as violating the written description requirement.
REMAND
We remand this application to the Examiner to resolve an internal
conflict between allowed claims 53 and 79-80 and rejected claims 40, 56,
70, 78, 82 and 84.
The Examiner indicated that claims 53 and 79-80 are allowed. We
note that independent claim 53 is identical to claim 38 with the exceptions
that claim 53 recites “trimethylolpropane” instead of “a hindered polyol”
and the mixture of monocarboxylic acids in claim 53 is not literally
described as having “two or more” C5 to C9 linear monocarboxylic acids.
In effect, claim 53 is narrower than claim 38 only in respect to the “hindered
polyol” being trimethylolpropane.2 Because the Examiner did not include a
2 Though claim 53 does not recite that the mixture of monocarboxlic acids
comprises “two or more” of the C5 to C9 linear monocarboxylic acids, as
claim 38 does, such language (i.e., “two or more”) appears inherently to be
present in claim 53. The recitation of “a mixture of C5, C6, C7, C8 and C9
linear monocarboxylic acids” in claim 53 may reasonably be construed as
necessarily requiring “two or more” of the recited monocarboxylic acids
because a “mixture” requires at least two components.
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