Appeal 2007-0159
Application 10/850,019
We concur with the Examiner’s position. Patentability begins with
the legal question “what is the invention claimed?” See Panduit v. Dennison
Mfg. Co., 774 F.2d 1082, 1093, 227 USPQ 337, 344 (Fed. Cir. 1985). In
this case, the claimed method steps are introduced by the term “comprising.”
Likewise, the components of the reaction mixture are introduced by the term
“comprising.” This means that the claims, when given their broadest
reasonable construction, read on a process which includes, for example, a
step of adding a free radical initiator/source. See Invitrogen Corp. v.
Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir.
2003) (use of the open-ended term "comprising" to introduce method steps
does not preclude additional, unrecited steps). Appellants have not directed
us to any portion of the Specification which indicates that a narrower claim
construction is warranted. See In re Hyatt, 211 F.3d 1367, 1372, 54
USPQ2d 1664, 1667 (Fed. Cir. 2000) (during examination, claims are given
their broadest reasonable interpretation consistent with the specification).
Moreover, even though the prior art does not specifically recognize the
feature of spontaneous polymerization, the Examiner’s burden of proof is
met where, as here, the Examiner has established that the prior art discloses
polymerization of the claimed monomers using the same or similar
polymerization techniques. See In re Cruciferous Sprout Litig., 301 F.3d
1343, 1349-50, 64 USPQ2d 1202, 1206 (Fed.Cir. 2002) (Inherent
anticipation does not require that the ordinary artisan would have recognized
the inherent disclosure). See also, In re Spada, 911 F.2d 705, 708-09, 15
USPQ2d 1655, 1657-58 (Fed. Cir. 1990).
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