Ex Parte Kumar et al

Board of Patent Appeals and Interferences

Feb 28, 2007

10007866 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VIJAY KUMAR and YANG DONG
__________

Appeal No. 2007-0744
Application No. 10/007,866
__________

ON BRIEF
__________

Before ADAMS, MILLS, and GRIMES, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 36.
Claim 36 is the only pending claim and appears in the attached appendix to the

Brief.

Grounds of Rejection
Claim 36 stands rejected under 35 U.S.C. § 112, first paragraph for failing to
comply with the written description requirement.
We affirm the written description rejection.

Appeal No. 2007-0744
Application No. 10/007,866

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DISCUSSION

35 U.S.C. § 112, first paragraph
Claim 36 stands rejected under 35 U.S.C. § 112, first paragraph for failing to
comply with the written description requirement.
The examiner contends that Appellants amended Claim 361 by incorporating into
the claim the text "said biodegradable oxidized cellulose ester having an acid number of
at least 133." Answer, page 3. The examiner argues that this amendment is not
supported in the original specification.
Appellants point to Example 1, page 13, line 26, for support of this amendment to
claim 36. Brief, page 5. This portion of the specification states the starting material for
synthesis of the compound in the example has a carboxylic acid content of 13.7%.
Appellants contend that Example 1 provides the acid content of the starting material and
"the resulting compound has a carboxylic acid content of 10.57%, which directly
converts to an acid number of 133.9. (8/25/05 amendment, p. 10)." Brief, page 5.
The examiner argues that the conversion of the acid number in Example 1 is
insufficient documentation to support claim 36 because the instant specification does
not disclose the carboxylic acid content of the resulting compound thereof and does not
set forth the acid number of the resulting compound. We agree.

1 Amendment filed August 25, 2005.
Appeal No. 2007-0744
Application No. 10/007,866

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Written description is a question of fact, judged from the perspective of one of
ordinary skill in the art as of the relevant filing date. See Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1119 (Fed. Cir. 1991). In the present
case, it has not been shown that one of ordinary skill in the art would have understood
that the resulting compound of Example 1 would necessarily and inherently have the
carboxylic acid content and acid number appellants attribute to it.
Appellants rely on Application of Nathan, 328 F.2d 1005, 1006, 140 USPQ 601,
604 (C.C.P.A. 1964), and Regents of the University of New Mexico v. Knight, 321 F.3d
1111, 1122, 66 USPQ2d 1001, 1009 (Fed. Cir. 2003), as authority supporting the
amendment of the specification of an application with an inherent feature of a chemical
compound described therein. Brief, pages 5-6; Reply Brief, page 3.
Appellants argue that carboxylic acid content of 10.57% and acid number of
133.9 are inherent in the resulting compound of Example 1, thus justifying amendment
of the specification and claim 36 in this case as they did in Nathan and Knight. If such
properties are as critical to the claimed invention as they appear to be, the written
description of the specification must recite such physical and chemical properties.
We do not disagree that a specification can be amended to recite inherent
properties of a chemical compound disclosed therein. Appellants are reminded,
however, that arguments of counsel cannot take the place of evidence. In re DeBlauwe,
736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984), In re Payne, 606 F.2d 303,
315, 203 USPQ 245, 256 (CCPA 1979). In the present case, Appellants have put forth
Appeal No. 2007-0744
Application No. 10/007,866

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no evidence to support their position that the resulting compound of example 1
necessarily, inherently has a carboxylic acid content of 10.57% and evidence that the
carboxylic acid content of 10.57% directly converts to an acid number of 133.9. Such
evidence may be made in the form of a Declaration under 37 C.F.R. §1.132.
In view of the absence of such evidence in the present case, the written
description rejection is affirmed.
CONCLUSION
The rejection of claim 36 under 35 U.S.C. § 112, first paragraph for failing to
comply with the written description requirement is affirmed.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).

AFFIRMED

)
Donald E. Adams )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Demetra J. Mills )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )

DJM/jlb
Appeal No. 2007-0744
Application No. 10/007,866

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