Appeal 2006-2739
Application 09/918,584
hydrophilic group recitations. This is consistent with the amendment history
of the claim and the arguments of Appellants. We, therefore, conclude the
claims are limited to the second embodiment in which the chromophore dye
is incorporated into the polymer backbone. Because the claim is limited to
the second embodiment, we place more weight on the disclosure of the
second embodiment than on the disclosure of the first embodiment in our
review of the question of whether there is written descriptive support of the
subject matter of claim 1. We consider the Specification as a whole
weighting various disclosures as appropriate.
We find that the Examiner did not meet the burden of establishing a
prima facie case of lack of written descriptive support under 35 U.S.C.
§ 112, ¶ 1. The rejection never truly discussed the understandings of
persons skilled in the art and did not adequately answer the question of
whether the written description would reasonably convey to a person skilled
in the art that Appellants had possession of the claimed subject matter at the
time of filing. The Examiner did not address any indicia of lack of written
description such as unpredictability in the art.
The tenor of the Specification suggests not only that a wide range of
hyperbranched polymers can be used including those with hydrophilic and
hydrophobic groups, but that a variety of water-soluble ones are
contemplated. This is evidenced by the disclosure that “any hyperbranched
polymer may be used,” a disclosure suggesting a large genus, and by the
variety of subgenus disclosures including water-soluble polyamide, classes
of polymers which include hydrophilic groups such as polyamides,
polyesters, and polyethers, the generic formula M1-R7-M2m wherein R7 can
be a carbonyl group, and the specific polymers depicted on pages 8 and 9
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