INSUFFICIENCY: Disclosure to Support claims, Rule 25.
The disclosure of five radicals held sufficient to support unlimited
generic terms in the claims provided other parameters are stated as to use,
in this case as necessary to produce the electrophoretic pigment specified
in claims 3 to 12 under rejection; but not specified in claims 1 and 2 in
respect of which the rejection is affirmed.
FINAL ACTION: Overruled in part.
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This decision deals with a request for review by the Commissioner
of Patents of the Examiner's Final Action dated September 22, 1971 on
application 963,998. This application was filed in the name of Lester
Weinberger et al and refers to "Electrically Photosensitive Particles
Useful In Electrophotographic Imaging Processes". The Patent Appeal
board conducted a hearing on November 2, 1972, Mr. W. Mace represented
the applicant.
In the prosecution terminated by the Final Action the examiner
refused the claims in that the definition of R as bring "selected from
the group consisting of aromatic, heterocyclic, substituted aromatic
and substituted heterocyclic radicals" lacks support in the disclosure.
The action of the examiner reads in part:
In order to sustain such unlimited generic terms as "aromatic",
"heterocyclic" and their substituted counterparts covering
such a multitude of varying radicals, the specification must
show with reasonable certainty that the many different radicals
permit the process to be operative and that the products all
have the same desired utility. The applicant has failed to
meet this requirement. The disclosure of the five aforemen-
tioned radicals is not sufficient to support claims containing
these unlimited generic terms. It cannot be ascertained from
the limited disclosure whether the process is operative
because of the characteristics shared by these disclosed
radicals; or whether the process is operative because of the
characteristics of the unlimited genera for the definition of
R. Similarly, the disclosure fails to show that the resultants
of the process wherein R is other than disclosed but falling
within the generic definition for R,all have the same utility,
that of a pigment having an intense magenta colour.
The response of the applicant dated December 22, 1971 reads in part:
The Examiner in the Official Action has raised the objection
that the definition of R as being selected from the group
consisting of aromatic, heterocyclic, substituted aromatic and
substituted heterocyclic radicals lacks sufficient support in
the disclosure. Such allegation is most strenuously traversed
and Applicant respectfully submits that the disclosure and
the specific examples provide a proper definition with respect
to the substituted aromatic radical in outlining the species
2'-methyl phenyl, 4'-methoxy phenyl,3'-cyano phenyl and
~-cyano phenyl and as noted by the Examiner presumably the
phenyl radical. Furthermore, Applicant in the disclosure has
provided a proper definition with respect to the heterocyclic
and substituted heterocyclic radical in outlining the species
the pyridyl radicals and 3-methoxy pyridyl radical. Applicant
in providing examples of both the radicals and substituted
radicals respectfully submits that in the absence of any
prior art to the contrary he should be entitled to claim
his invention broadly. This is in concert with Section 36
at the Patent Act in that the disclosure clearly sets forth
the process for using the compounds contemplated and claims
such process in what Applicant considers in distinct and
explicit terms.
As previously drawn to the Examiner's attention, that to
provide more examples,(how many more would be required is
debatable,) with respect to the various compounds to meet the
Examiner's requirement would result in an unwieldly and bulky
disclosure. Applicant submits that the disclosure contains
sufficient examples as required by Section 36(1) in order
to be entitled to include in the Claims the broad definition
with respect to R. The Claims in Applicant's opinion comply
fully with the provisions of Rule 25, and meet the requirements
of Section 36(2).
Having studied the application the Board finds that claims 1 and 2
are directed to a chemical process for preparing a pigment without any
restrictions or qualifying parameters whatsoever, while claims 3 to 12
inclusive are limited to the use of pigments in the field of electro-
phoretic imaging. Therefore, considerations concerning the definition
of "R" in claims 1 and 2 are different than that of claims 3 to 12. Thus,
claims 1 and 2 appear to relate to a different invention than the remainder
of the claims.
The disclosure on page 9 states that the reaction produces a
composition which is useful as photosensitive pigment particles. However,
claims 1 and 2 attempt to extend the monopoly beyond the invention
disclosed by failing to define the ingredients employed in the process
which are necessary to produce an electrophoretic pigment. Therefore,
the Board finds that the pigment of claims 1 and 2 must be restricted
to the specific use of electrophoretic imaging processes as in the
remainder of the claims, for this is the only purpose of the pigment
that the applicant has in mind as no other use is disclosed.
.
Claims 3 to 12 are limited to pigments in the field of electrophoretic
imaging where "R" is not the sole limitation and does not purport to
define a compound per se, but is merely a substituent of an extremely
large complex nucleus. The composition has common characteristics as
noted on page 7 of the disclosure: "The compositions produced by the
above reaction have common characteristics of brilliant, intense, magenta
colour; of insolubility in water and the common organic solvents,
example, benzene ..., and of unusually high photosensitive response."
These characteristics limit the compounds to reasonably well defined
parameters.
The Board is satisfied that while the field of compounds has been
defined generally, it is readily within the scope of one skilled in the
art to determine by simple tests, without further invention, what
additional species of compounds will produce the required photosensitive
response as amply exemplified in the disclosure. The Board is also
satisfied that the process and products claimed in claims 3 to 12 satisfy
Section 36(2) of the Patent Act and are fairly based on the compounds
and the processes using the compounds disclosed.
Therefore, the Board recommends that the Final Action be affirmed
with respect to claims 1 and 2, and reversed with respect to claims 3
to 12 inclusive.
R. E. Thomas,
Chairman, Patent Appeal Board.
1 concur with the findings of the Patent Appeal Board and refuse
to grant a patent with respect to claims 1 and 2. The applicant has six
months in which to appeal this decision in accordance with Section 44
of the Patent Act.
Decision accordingly,
A.M.Laidlaw,
Commissioner of Patents.
Dated at Ottawa,Ontario,
this ~~day of November,1972.
Agent for Applicant
Messrs. Gowling & Henderson