Appeal 2007-0889
Application 09/935,668
non-crosslinked, linear resins, it is the Examiner's position that these two
second polyester resins are not sufficient to provide original descriptive
support for the breadth of second polyester resins claimed.
Appellants, on the other hand, maintain that one of ordinary skill in
the art would have recognized the error in the original Specification which
describes the second polyester resin as non-linear. Appellants contend that
one of ordinary skill in the art, upon reading the Specification and
descriptions in the examples, "would have recognized the existence of the
error in the specification, i.e., that the description of the non-crosslinked
polymer as 'non-linear' was an error, and would have realized that the
correction would have been that the second polymer should have been
referred to as 'non-crosslinked' (claims 1 and 19) or 'linear' (claims 20 and
22)" (page 13 of principal Br., first paragraph). Appellants also rely upon a
Declaration of Dr. Masatoshi Kimura as evidence that an expert in polymer
chemistry would have "easily recognized that an error was apparent, and
also easily recognized what the correct meaning should have been" (page 14
of principal Br., second para.).
In reaching our decision, we find that the Kimura Declaration is of
limited probative value. While Appellants present Dr. Kimura as "an expert
in polymer chemistry" (page 14 of principal Br., third para.), the Declaration
states that Dr. Kimura graduated from the Department of Electronic
Engineering in 1973, completed a masters course in the Department of
Electronic Engineering in 1975, and has a doctorate in Engineering, in
addition to being engaged in research and development of an electrostatic
recording process and an electrophotographic process. However, the
Declaration does not establish Dr. Kimura as an expert in polymer
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