Appeal No. 2007-0111
Reexamination 90/006,297
1 [who] bears the burden of establishing its entitlement to the filing date of a
2 previously filed application.” In re Ziegler, 992 F.2d at 1200, 26 USPQ2d at 1603.
3 Neither the inventors in the original examination nor the patent owner in this
4 reexamination have met this burden.
5 The patent owner contends that our effective filing date analysis is inapt for
6 appealed claims 9-15 and 22-28 because these claims do not “require or exclude
7 ethylene.” (Amended appeal brief at 37.) The patent owner further argues that we
8 “erroneously read ethylene into” these claims. (Id.) These arguments lack merit.
9 Appealed claim 16, which depends from claim 9, demonstrates that the term
10 “monomeric olefin molecules” in claim 9 reads on ethylene. No limitation as to
11 amount of ethylene content is recited in appealed claim 9. Because the disclosures
12 of the Italian priority applications, the ‘097 application, and the ‘840 application as
13 originally filed contain a description that ethylene, if present, is used in “small
14 amounts,” appealed claim 9 suffers from the same problem as appealed claim 1 in
15 that it exceeds the scope of the disclosures in the earlier filed applications.
16 With respect to appealed claim 9, the patent owner contends that the
17 description at pages 4-5 of the ‘840 application provides support for all claims that
18 recite preparing a copolymer of ethylene. (Amended appeal brief at 38.)
19 Specifically, the ‘840 application states:
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