Appeal No. 2007-0111
Reexamination 90/006,297
1 Because the first-filed ’097 application did not reasonably convey to one
2 skilled in the relevant art that the inventors possessed the now claimed process
3 having no limitation on ethylene comonomer content, the appealed claims cannot
4 possibly be entitled to an earlier effective filing date based on either of the Italian
5 priority applications.10 As noted above, the general concept of the particular
6 polymerization process recited in appealed claim 1 was submitted on October 2,
7 1964, which is more than one year after the issue date of Vandenberg (October 16,
8 1962).
9 We are also in full agreement with Examiner Smith’s view concerning the
10 insufficiency of declaration evidence on which the patentees rely for written
11 description of the appealed subject matter. Specifically, Examiner Smith
12 determined (Office action mailed Jun. 16, 1992 in application 07/883,912, paper
13 59, pages 2-3):
14 The Declaration[s] of Drs. Corradini and Giannini cannot supply to
15 the priority documents what is not there - a description of the
16 invention in accordance with 35 U.S.C. 112. These Declarations,
17 while not described as such, are in fact directed to the proposition of
18 enablement as was the previous Declaration of Dr. Giannini
19 (Declaration of May 19, 1987). While it might be obvious from the
20 specification and the priority document (Italian 25109) to
21 copolymerize ethylene with alpha-olefins of 4 or more carbon atoms
22 in the presence of a coordination catalyst containing a component
10 Indeed, we find no argument by the patentees in any proceeding of record
that the claims on appeal do not encompass all copolymerized amounts of ethylene.
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