Ex parte YOUNG et al. - Page 6




                 Appeal No. 95-0537                                                                                                                     
                 Application No. 08/077,709                                                                                                             


                 this ground, the question becomes an appealable one.  MPEP §                                                                           
                 608.04(c) (7th ed., Jul. 1998).  For the reasons set forth by                                                                          
                 appellants (see Brief, pp.16-17), we agree that appellants'                                                                            
                 original disclosure provides descriptive support for the                                                                               
                 following amendments to claims 1 and 6:3                                                                                               
                         (1) claim 1, line 4: before “aligned” delete “in-plane”                                                                       
                 and insert --c-axis--,                                                                                                                 
                          (2) claim 1, line 4: after “aligned” delete “, and” and                                                                       
                 insert --in one preferential direction on--,                                                                                           
                          (3) claim 6, line 4: before “preferential” add --c-axis                                                                       
                 alignment in one--, and                                                                                                                
                          (4) claim 6, line 4: after “preferential” delete “in                                                                          
                 plane orientation, and” and insert --direction on--,                                                                                   
                          However, we disagree with appellants that the                                                                                 
                 application, as originally filed, provides descriptive support                                                                         
                 for the phrase “of at least one micron square” in claims 1 and                                                                         
                 6.  The purpose of the written description requirement of 35                                                                           
                 U.S.C. § 112, first paragraph, is to convey with reasonable                                                                            


                          3In the Answer, the examiner indicates that the addition                                                                      
                 of "high temperature" to the claims is not considered new                                                                              
                 matter (Answer, p. 14).                                                                                                                
                                                                           6                                                                            





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007