Appeal 2007-3386
Application 10/375,889
The Examiner has found that the amended claim language embraces
copolymers that are not described pursuant to § 112, first paragraph in the
Specification, as filed. The Examiner has found that the Specification
Example furnishes written descriptive support, at best, for a copolymer
component that includes a mixture of monomers, in polymer form, of all of
the following: butyl acrylate, ethyl acrylate, acrylonitrile, acrylamide,
itaconic acid, and N-methylolacrylamide (Answer 4). However, the
Examiner has found that the amended claim limitation embraces other
copolymers than the exemplified copolymer, such as a copolymer of
acrylonitrile or a copolymer including itaconic acid monomer, each without
any requirement for all the other monomers of the Specification Example
(Answer 8, 10 and 11). Moreover, the Examiner has found that the
Specification, as filed, does not otherwise furnish written descriptive support
for the amended claim language (Answer 7-8, 11-12). Hence, the Examiner
has made out a prima facie case of a lack of descriptive support for the
rejected claims.
Appellants contend that Example 1 and a portion of page 7 of the
Specification furnish written descriptive support for the amended claim
language that satisfies the requirements of § 112, first paragraph as “[a]ll of
the monomer components recited are found within the four corners of the
specification” (Br. 6).
Appellants’ arguments are not persuasive, on this record, because the
portion of the Specification referred to by Appellants does not describe a
copolymer including itaconic acid and/or acrylonitrile as a polymerized
monomer component thereof without the other co-monomers of the
Specification Example. However, such a copolymer is included by the
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