Appeal 2006-2739
Application 09/918,584
Appellants further contend that the objection to claims 11-13 under
37 C.F.R. § 1.75(c) is properly appealed because the objection should have
been made as a rejection under 35 U.S.C. § 112, ¶ 2 (Br. 2). The Examiner
contends that this issue relates to petitionable subject matter under 37 C.F.R.
§ 1.181 and is not appealable (Answer 3).
Therefore, this appeal presents us with two issues:
1. Is there adequate written descriptive support for “water-
soluble” and hydrophilic” as those terms are used in claim 1?
and
2. Do we have jurisdiction to review the objection under 37 C.F.R.
§ 1.75(c)?
The Issue of Adequate Written Descriptive Support
The issue of adequate written descriptive support under 35 U.S.C.
§ 112, ¶ 1 is a factual question which must be decided on a case-by-case
basis.
We find the following facts:
Claim 1 is directed to an ink composition including, among other
things, a water-soluble hyperbranched polymeric dye. The dye comprises “a
hyperbranched polymer having a dye chromophore and a hydrophilic group
incorporated into the polymer base chain.”
The Specification discloses two embodiments of the hyperbranched
polymer, one in which the dye chromophore is attached to the polymer
backbone as a pendant group (Specification 4:20 to 6:16), and another in
which the dye chromophore is incorporated into the polymer backbone
(Specification 6:17 to 9:2).
3
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