Appeal No. 2006-2680
Application No. 10/710,187
We agree with Appellants that the Examiner has not established that
the term “polyetherimide” in claim 1 encompasses the polyetherimide esters
described in Liu ‘380. “Although the PTO must give claims their broadest
reasonable interpretation, this interpretation must be consistent with the one
that those skilled in the art would reach.” In re Cortright, 165 F.3d 1353,
1358, 49 USPQ2d 1464, 1467 (Fed. Cir. 1999).
The portion the Encyclopedia of Polymer Science and Engineering
cited by Appellants reads as follows (citations omitted, emphasis added):
The chemistry used in the condensation of bisphenols with
dinitrobisimides involves a nucleophilic aromatic substitution
reaction in which the polymer chain is generated by the
formation of successive aromatic ether bonds. This mechanism
is significantly different from that of the condensation of
diamines with dianhydrides, and the polymers derived by this
route are known as polyetherimides.
(12 Encyclopedia of Polymer Science and Engineering 371.)
Also, as argued by Appellants, the polymers displayed in Table 5 on
page 372 of the Encyclopedia of Polymer Science and Engineering all
contain successive aromatic ether moieties. Thus, Appellants have presented
evidence to show that those skilled in the art considered polyetherimides to
be compounds containing aromatic ether linkages.
After Appellants presented evidence rebutting the prima facie case of
anticipation, the burden shifted back to the Examiner to establish that his
construction of “polyetherimide” was consistent with that used by those of
skill in the art. Cf. In re Sasse, 629 F.2d 675, 681, 207 USPQ 107, 111-112
(CCPA 1980) (burden shifted back to PTO after appellants presented
evidence that alleged anticipatory reference was not enabling).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013