Appeal No. 1997-0334
Application 08/211,698
In appellants' original claims the "a2)" component was
originally claimed in terms of being present in a mixture with
component "a1)" in an amount of "up to 100% by weight". This
reflected appellants' disclosure from page 7, lines 16 and 17
and
page 10, lines 8 through 11 of the specification that
component "a2)" was optional, that is, it need not be present.
In the event of further prosecution of the subject matter of
this application, the examiner and appellants should consider
whether the newly added claim language "a positive amount to
100% by weight" is described, in the sense of 35 U.S.C. § 112,
first paragraph, by appellants' original disclosure. The
examiner and appellants should also investigate exactly what
is intended by the phrase "a positive amount" since we find no
disclosure in the specification defining said phrase.
As a related issue, the examiner and appellants should
consider whether or not appellants' priority document, a
translation of which was filed on October 16, 1995, satisfies
the requirements of 35 U.S.C. § 112 inherent in 35 U.S.C. §
119. Benefit of prior applications under 35 U.S.C. § 119 for
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