Appeal 2007-4316
Application 09/911,268
particular chemical structure for an oligophosphate in the Eckel 930 and
Gaggar specifications indicate that IPP is present as an impurity at less than
1 w%, as required by Applicants' claims. (Answer at 4 and 5.) Because
Applicants have not made any arguments regarding the separate patentability
of any of the claims, we need not address the claims separately. Moreover,
arguments not made in the principal appeal brief have been waived.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner has not offered any other explanation of why it appears
that Eckel 930 and Gaggar describe compositions that are the same or
substantially the same as the presently claimed subject matter. In particular,
the Examiner has not directed our attention to any disclosure in either
Eckel 930 or in Gaggar regarding the synthesis of oligophosphates or their
purification prior to use as a flame retardant. Nor has the Examiner directed
our attention to any properties of the oligophosphate or the polycarbonate
blends that might provide reason to presume that the prior art compositions
describe or reasonably would have suggested Applicants' claimed subject
matter. Thus, we conclude that the Examiner's theory of the case must be
based on inherency.
Anticipation by inherency, however, is proven only if the allegedly
inherent property is inevitably present in the prior art. Applicants argue (Br.
at 5), that Dr. Eckel's declaration shows that commercially available
bisphenol A diphenylphosphate, which is said to be the common name for
the compound of formula (V) of the 268 Application, can contain as much as
15 w% IPP. (Br., Evidence App'x. at 4.) Accordingly, it is not inevitable
that compound D.1 contained less than 1 w% IPP. The presence of IPP in
commercially available oligophosphates within the scope of Applicants'
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