Appeal No. 2007-0111
Reexamination 90/006,297
1 convey to one skilled in the relevant art the copolymerization of ethylene in any
2 amount.
3 Merely because the original disclosure described a generic process for
4 polymerizing a monomer mixture comprising monomer A does not mean that the
5 applicant can later claim a process for polymerizing a monomer mixture
6 comprising monomers A and B. The originally described process encompassed a
7 virtually infinite number of possible monomers copolymerizable with monomer A,
8 and this is not a sufficiently specific description of monomers A and B. Moreover,
9 in this case, the original disclosure informed one skilled in the art that when
10 ethylene is present, it is polymerized in “small amounts.”
11 The patent owner further contends that we did not consider the “totality of
12 the disclosures” because the disclosures in the earlier filed applications regarding a
13 “small amount” or “5%” of ethylene was only an embodiment of the invention.
14 (Amended appeal brief at 42.) Specifically, patent owner argues that these
15 disclosures include the language “This invention relates to...” as opposed to “This
16 invention is limited to...”
17 Again, the problem with this argument is that the disclosures contain no
18 other description that would reasonably convey to one skilled in the relevant art
19 what other embodiments are part of the patentees’ invention such that that person
20 would conclude that the patentees possessed the invention now claimed. We find
72
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