Appeal 2007-0105
Application 10/698,607
dependent claim 24 limits the method of claim 6 by comprising at least the
step of converting the formed convertible moiety of the amphipathic
polymer particles to a hydrophilic form. With respect to the claim limitation
“an unsaturated monomer containing a convertible moiety in hydrophobic
form,” Appellant discloses that
[a]s defined herein, the term “convertible monomer” refers to
monomers with long side chain acid groups. The convertible
monomers are water insoluble in the monomer form. After
polymerization, the acid group on the side chain of the
convertible monomers can be converted to anionic salt by
adjusting the pH of the solution to a basic range (pH > 7), i.e.,
the hydrophobic monomer incorporated into the polymer as a
hydrophobic moiety, but is converted to a hydrophilic moiety
under basic pH.
Specification 4:13-18; see also 6:15-25. Appellant exemplifies the
“unsaturated monomer containing a convertible moiety in hydrophobic
form” with, among other things, “mono-methacryloyloxyethyl succinate”
(id. 5:13). The transitional term “comprising” opens the claims to include
methods that have additional steps and materials. In re Baxter, 656 F.2d
679, 686, 210 USPQ 795, 802 (CCPA 1981) (“As long as one of the
monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements,
or materials.”).
There is no dispute that Idogawa discloses to one skilled and one of
ordinary skill in the art a method of preparing a fine particle water base
dispersion liquid for a water base ink by emulsion polymerizing a mixture
containing, among other things, a vinyl monomer having an acid functional
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