Ex Parte Miyazawa et al

Board of Patent Appeals and Interferences

Sep 14, 2010

10534399 (B.P.A.I. Sep. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KAZUYUKI MIYAZAWA
and TAKASHI OKA
__________

Appeal 2009-008775
Application 10/534,399
Technology Center 1700
___________

Before MICHAEL P. COLAIANNI, ADRIENE LEPIANE HANLON, and
MARK NAGUMO, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008775
Application 10/534,399

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A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 2, 4, and 5 under 35 U.S.C. § 112, first paragraph,
based on the written description requirement. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to a polysiloxane having
repeating units a and b or repeating units a, b, and c. Claim 2, reproduced
below in relevant part, is illustrative.
2. A polysiloxane having repeating units a and b
represented by the following formula (5):

(5)

wherein R1, R2, and R3, independently of each other,
denote an alkyl group or perfluoroalkyl group having 1-22
carbon atoms, an alkoxysilyl group having 1-6 carbon atoms
via an alkylene group having 1-6 carbon atoms, a phenyl group,
or hydroxyl group, n denotes an integer 1-22; and a and b
denote constituent units of the polysiloxane . . . .

Appeal 2009-008775
Application 10/534,399

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Appeal Brief dated September 30, 2008 (“App. Br.”), Claims Appendix
(emphasis added).
Similarly, claim 5 recites “[a] polysiloxane having repeating units a, b
and c” represented by formula (7) wherein “a, b and c denote constituent
units of the polysiloxane.” App. Br., Claims Appendix.
B. DISCUSSION
The only issue on appeal is whether the Examiner reversibly erred in
finding that the original disclosure does not provide written description
support for the limitations that “a and b denote constituent units of the
polysiloxane” (claims 2 and 4) and “a, b and c denote constituent units of the
polysiloxane” (claim 5).
There is no dispute that the original disclosure provides literal support
for the claim language at issue. See Examiner’s Answer dated December 8,
2008 (“Ans.”), at 4; App. Br. 18-19; Reply Brief dated February 5, 2009, at
9; Spec. 13:8-10. Nonetheless, the Examiner contends that the claims on
appeal do not comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph, because the Appellants do not provide numerical
values for a, b, and c in the Specification or the claims. Ans. 3-7.
The test for determining compliance with the written description
requirement of § 112, first paragraph, is whether the disclosure of an
application, as originally filed, 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 (Fed. Cir. 1983).
Admittedly, the claims on appeal do not recite numerical values for a,
b, and c. Thus, for purposes of the written description requirement, it is
immaterial whether numerical values for a, b, and c are provided in the
Appeal 2009-008775
Application 10/534,399

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original disclosure. For this reason, the Examiner’s § 112, first paragraph,
rejection based on the written description requirement will be reversed.
C. DECISION
The decision of the Examiner is reversed.

REVERSED

sld

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