Appeal 2007-0650
Application 10/808,264
Appellants contend that the compounds of Matzner contain
carbonyl groups between aromatic groups and such is excluded from
the scope of the claims (Br. 5). Appellants further contend that the
processes of Matzner produce only polymers containing carbonyl
groups in the main chain, no other processes involving a base and a
copper compound are disclosed (Br. 5). The Examiner contends that
the claims do not exclude the carbonyl groups of Matzner (Answer 5).
The issues are: (1) Are the claims open to the presence of the
carbonyl groups disclosed by Matzner? and (2) Has the Examiner
provided sufficient evidence showing that Matzner describes a process
involving a base and a copper compound for making the claimed
compounds?
The resolution of the first question requires a determination of
the scope of the claims. During examination “claims . . . are to be
given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004).
Looking at claim 22 as representative, we note that this claim is
directed to a process of preparing a polyaromatic ether comprising the
formula –(–O–Ar–)n–.
With regard to the identity of the “Ar” group, we read the claim
clause in concert with the Specification (e.g., Specification ¶¶ 20-21).
In this formula “Ar” is an independently selected divalent aromatic
radical. The radical can be any divalent radical with or without
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