Appeal No. 2007-0744
Application No. 10/007,866
DISCUSSION
35 U.S.C. § 112, first paragraph
Claim 36 stands rejected under 35 U.S.C. § 112, first paragraph for failing to
comply with the written description requirement.
The examiner contends that Appellants amended Claim 361 by incorporating into
the claim the text "said biodegradable oxidized cellulose ester having an acid number of
at least 133." Answer, page 3. The examiner argues that this amendment is not
supported in the original specification.
Appellants point to Example 1, page 13, line 26, for support of this amendment to
claim 36. Brief, page 5. This portion of the specification states the starting material for
synthesis of the compound in the example has a carboxylic acid content of 13.7%.
Appellants contend that Example 1 provides the acid content of the starting material and
"the resulting compound has a carboxylic acid content of 10.57%, which directly
converts to an acid number of 133.9. (8/25/05 amendment, p. 10)." Brief, page 5.
The examiner argues that the conversion of the acid number in Example 1 is
insufficient documentation to support claim 36 because the instant specification does
not disclose the carboxylic acid content of the resulting compound thereof and does not
set forth the acid number of the resulting compound. We agree.
1 Amendment filed August 25, 2005.
2
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