Appeal 2007-0693
Application 10/188,519
1 (4) claims 5-10 and 12-20 would have been obvious in view
2 of Boer because, although “Boer does not explicitly state
3 the binder (polymer) has an ethylene to propylene weight
4 percent of greater than 20:80,” “it is not inventive to
5 discover the optimum or workable ranges by routine
6 experimentation” and the limitations of “claims 5, 10, 15
7 and 20 are not given patentable weight because they
8 recite an intermediate product” (id. at 4-05).
9 Appellants, on the other hand, contend that:
10 (1) the disclosure, as originally filed, includes a written
11 description of the subject matter of claims 5, 10, 15, and
12 20 (Appeal Brief filed June 26, 2006 “Br.” at 4-5);1
13 (2) claims 5, 10, 15, and 20 do not improperly broaden the
14 claims from which they depend because the term
15 “acrylate” used to define one of the comonomers of the
16 copolymers in the base claim (i.e., claim 1) encompasses
17 the acid salts recited in the rejected claims (Br. 5-6);
18 (3) claims 1-4 and 11 are not anticipated by Boer because the
19 reference does not describe the subject matter with
20 sufficient specificity and, in particular, does not disclose
21 the recited ethylene-propylene weight content (i.e., the
1 This is to be distinguished from Appellants’ Appeal Brief filed on
December 20, 2005, The December 20, 2005 Appeal Brief addressed
different rejections than those before us and resulted in the Examiner
reopening prosecution.
4
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