Appeal No. 2007-3827
Application 08/713,905
purposes where there is adequate written description in the Specification
establishing that they were in possession of the invention to which they
retreat at the time the Application was filed. See, e.g., Wertheim, 541 F.2d at
263-64, 191 USPQ at 97.
We agree with the Examiner’s position that the passage at page 5,
lines 19-21, when taken in context of the remainder of the paragraph (see
above p. 6) and the disclosure in the Specification as a whole, would not
indicate to one skilled in the art that the hydrolyzable chlorine content of the
product of the process is controlled by the vapor phase temperature and
temperature conditions specified in the claim. Indeed, the cited passage as a
whole discloses that post reaction processing involving recovery of any
manner of ether (poly)isocyanate product and the subsequent use of any
manner of isolation methods result in a product “in pure form,” none of
which workup steps are required by the claimed process or disclosed in the
Specification with respect to the manner in which a hydrolyzable chlorine
content falling within the claimed range is arrived at. Cf. In re Sussman, 141
F.2d 267, 269-70, 60 USPQ 538, 541 (CCPA 1944) (“If appellant obtains a
new product through reaction of the elements mentioned, it must be due to
some step in the process not included in the claim.”). In this respect, the
result in cases such as In re Eickmeyer, 602 F.2d 974, 202 USPQ 655
(CCPA 1979), cited by Appellants (Br. 4), involving ranges of specified
skilled in the art the information that the applicant invented the
subject matter of the claims. In other words, we must decide
whether the invention appellants seek to protect by their claims
is part of the invention that appellants have described as theirs
in the specification. [Citations omitted.]
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