Appeal 2007-3386
Application 10/375,889
filed. Claims 1, 3-5, 7, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fukushima in view of Ohta.2 Claim 6 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over Fukushima in
view of Ohta and Mead.
We affirm all of the Examiner’s rejections. Our reasoning follows.
§ 112, first paragraph Rejection
Appellants argue the claims together as a group. Accordingly, we
select claim 1 as the representative claim on which we decide this appeal as
to this ground of rejection.
Here, the Examiner maintains that the amended language added to
claims 1 and 8 (as further amended February 27, 2006) lacks § 112, first
paragraph written descriptive support in the Specification, as filed. The
amended limitation at issue is: “a crosslinkable resin binder composition
consisting of copolymers selected from the group of monomers, in
polymerized form, of (meth)acrylic acid esters, acrylonitrile, acrylamide,
itaconic acid, n-methylolacrylamide, and mixtures thereof” (Claims 1 and 8).
The question that must be considered is whether the originally filed
disclosure reasonably conveys to one of ordinary skill in the art that the
inventor had possession at that time of the later claimed subject matter. In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The
written description inquiry is a factual one and must be assessed on a
case-by-case basis. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561,
19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
2 Our references to Fukushima in this decision are to the English language
translation thereof, of record.
3
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013