Appeal No. 2007-0111
Reexamination 90/006,297
1 Claim 11 is directed to a method of interpolymerizing ethylene with a
2 specified class of alpha olefins which excludes propylene. The claim
3 does not place any limit on either the number or proportion of
4 monomers present during interpolymerization.
5 The ‘227 [Italian] application describes processes for polymerizing
6 propylene. At best, this application describes copolymers of
7 propylene which contain a small amount of ethylene. Since claim 11
8 excludes propylene and is unlimited in respect to the amount of
9 ethylene used in the process, we do not find that the ‘227 application
10 describes the subject matter of claim 11 in the manner provided by 35
11 USC § 112, first paragraph.[ ]9 Accordingly, we find that the claims
12 on appeal are not entitled to the benefit of the ‘227 application under
13 35 USC § 119.
14 The ‘109 [Italian] application describes methods of forming alpha
15 olefin polymers and copolymers. However, this application only
16 describes copolymers of alpha olefins and ethylene which contain a
17 small proportion of ethylene. We agree with the examiner that this
18 limited description of a process for making a very narrow class of
19 copolymers does not provide the requisite descriptive support for the
20 much broader process which is now claimed. Accordingly, we find
21 that the claims are not entitled to the benefit of the ‘109 application
22 under 35 USC § 119. [Emphasis added.]
23
24 Regarding the 37 CFR § 1.132 declaration of Umberto Giannini filed on
25 May 19, 1987, the Board found it unpersuasive as follows (id. at 4-5):
26 As pointed out by the examiner, Dr. Giannini’s declaration is directed
27 to whether the Italian applications enable one to practice the claimed
[ ]
9 We do not share the view expressed in Ex parte Natta, slip op. at 4, that
the appealed claims “exclude[] propylene.” This is because the term “comprises”
recited in the appealed claims does not exclude the presence of unrecited
monomers such as propylene. 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.”).
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