Appeal No. 2007-0111
Reexamination 90/006,297
1 which recited “interpolymerizing ethylene...cycloaliphatic radical” and
2 “interpolymerizing ethylene with styrene.” Specifically, the Board held:
3 Fatal to the examiner’s rejection is the fact that the appealed claims
4 contain no language regarding the amount of ethylene used in the
5 polymerization process that is not described in the original
6 specification...While it can be argued that the appealed claims
7 encompass amounts of ethylene greater than 5%, it is well settled that
8 it is not the function of the claims to specifically exclude possible
9 inoperable substances or ineffective reactant proportions.
10
11 Ex parte Natta, Appeal No. 95-2683 at 7-8. The Board in Ex parte Natta, Appeal
12 No. 95-2683, slip op. at 9 also referred to the ‘912 disclosure at page 10, lines 10-
13 14, which states:
14 The method of this invention may be used for polymerizing
15 vinyl hydrocarbons of the formula given including propylene, butene-
16 1, pentene-1, hexene-1, styrene, and so on, as well as mixtures thereof
17 and mixtures of the vinyl hydrocarbon with small amounts of ethylene.
18 [Emphasis added.]
19
20 Thus, it appears to us that the examiner’s rejection based on lack of written
21 description under 35 U.S.C. § 112, ¶1, was reversed because the disclosure of the
22 ‘912 application, as filed on May 12, 1992, included the rejected claims as part of
23 the written description and these claims were construed to exclude processes in
24 which the ethylene content is greater than 5%. Accordingly, we do not think that
25 this prior Board decision is relevant (much less controlling) to the issue before us,
26 which is whether Vandenberg is available as prior art because each of the Italian
27 priority documents, and the ‘097 application lacks written description support for
51
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