Appeal 2006-2523
Application 10/206,496
ethanol can comprise the initial reaction solution to which is added any
amount of “n-butanol.”3
We have considered the positions advanced by the Examiner (Answer
3-4 and 9-114) and Appellants (Br., e.g., 7-8 and 17-19; Reply Br. 32-35 and
50-52) with respect to the language “adding water to the reaction solution, at
a rate sufficient to initiate a polymerization reaction . . . while avoiding the
formation of precipitates in the solution and of a gel” appearing in claims 1
and 6. This limitation also appears in substantially the same language in
claims 16 and 19.
We determined this limitation in representative claim 1 applies to the
step of adding water to initiate the polymerization reaction, and indeed, the
subsequent step of “continuing to add water at a constant rate” is not
governed by this limitation (see above pp. 4-5). We find no basis in the
claim language or in the written description in the Specification on which to
read this limitation into the last specified step in the claims.
In the Background of the Invention, Appellants describe “one form of
[the liquid phase polymerization (LPP)] process” as involving “metal
3 The “n-butanol” limitation was present in claim 19 as originally filed. In
summarizing claim 19, Appellants state that “n-butanol (4 carbon atoms)
(should be t-butanol),” citing “Specification at page 9, line 10” (Br. 10). It is
well settled that Appellants’ mere intent as to the scope of the claimed
invention does not so limit the scope of a claim which is otherwise definite
when construed in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Cormany, 476 F.2d 998, 1000-02, 177
USPQ 450, 451-53 (CCPA 1973).
4 We have not considered the United States Patents cited for the first time in
the prosecution in this case in the Answer at page 10. Indeed, there is clear
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