Appeal No. 2007-3827
Application 08/713,905
the time the application was filed, had possession of the claimed invention,
thus, failing to comply with the written description requirement (Answer
3-4); and
Claims 1 and 2 under 35 U.S.C. § 103(a) as being unpatentable over
Lehmann in view of Joulak or Biskup or Bischof (id. 4-5).
Appellants state the claims in each group stand or fall together (Br. 3),
and thus, we decide this appeal based on claim 1 with respect to both
grounds of rejection. 37 C.F.R. § 1.192(c)(7) (2003); see also 37 C.F.R.
§ 41.37(c)(1)(vii) (September 2004).
This panel entered a decision in Appeal No. 1999-1008 on August 30,
2001 in this Application. In subsequent prosecution, Appellants amended
claims 1 through 4 and submitted the Declaration of Dr. Stutz under 37
C.F.R. § 1.132 (2002) (Stutz Declaration) with the Amendment filed
September 30, 2002. Accordingly, we consider the record anew. See In re
Rinehart, 531 F.2d 1048, 1051-52, 189 USPQ 143, 147 (CCPA 1976).
Considering first the ground of rejection under § 112, first paragraph,
written description requirement, the Examiner contends “Appellants have
failed to provide adequate support for the ranges of values claimed for the
hydrolyzable chlorine content” stated in claim 1 (Answer 3). The Examiner
finds the Examples support a hydrolyzable chlorine content of 24 ppm,
34 ppm, 43 ppm, 44 ppm, and 48 ppm, which does not provide support for
values below 24 ppm. The Examiner contends the disclosure at page 5, lines
19-21, of the Specification, indicating “the ether isocyanate may be isolated
in pure form by known processes is deficient, because the argued passage
lacks any specifics with a respect to controlling the hydrolyzable chlorine
content or what levels of hydrolyzable content differentiate a pure
compound from an impure compound” (id. 4).
3
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