Appeal No. 2007-0111
Reexamination 90/006,297
1 no other description that states: “The invention also relates to...” To be sure, the
2 absence of description of subject matter cannot be a basis for claiming that subject
3 matter many years later, especially when the absent description is clearly
4 contradictory to the description that is present. This would violate the notice
5 function of a patent application. “The purpose of the written description
6 requirement is to prevent an applicant from later asserting that he invented that
7 which he did not; the applicant for a patent is therefore required to ‘recount his
8 invention in such detail [in the originally filed specification] that his future claims
9 can be determined to be encompassed within his original creation.’” Amgen, 314
10 F.3d at 1330, 65 USPQ2d at 1397.
11 The patent owner asserts that original claim 1 of the ‘840 application uses
12 the term “predominates” to define the quantity of the “unsaturated hydrocarbons”
13 copolymerizable with ethylene, which would indicate to one skilled in the relevant
14 art that the amount ethylene would be more than “small amount” or “5%.”
15 (Amended appeal brief at 43.) We disagree.
16 The term “predominates” is used to quantify the amount of unsaturated
17 hydrocarbons having the structure CH2=CHR, not ethylene. Also, original claim 1
18 must be read together with other parts of the disclosure, which indicates that
19 ethylene is polymerized in “small amounts” relative to other copolymerizable
20 olefinic monomers. Even if the amount of ethylene were to be deduced from the
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