Appeal No. 1997-3392
Application 08/297,946
in the reaction medium when the starved feed polymer is added
(page 11). Thus, although “selecting” is not the best choice
of terms, it would have been reasonably clear to one of
ordinary skill in the art, in view of the specification, that
“selecting an amount of at least one component” requires that
the at least one component is actually present during the
starved feed addition.
For the above reasons, we reverse the rejections under 35
U.S.C. § 112, second paragraph.
Rejection under 35 U.S.C. § 112,
first paragraph, enablement requirement
Regarding enablement, a predecessor of our appellate
reviewing court stated in In re Marzocchi, 439 F.2d 220, 223-
24, 169 USPQ 367, 369-70 (CCPA 1971):
[A] specification disclosure which contains a
teaching of the manner and process of making and
using the invention in terms which correspond in
scope to those used in describing and defining the
subject matter sought to be patented must be taken
as in compliance with the enabling requirement of
the first paragraph of § 112 unless there is reason
to doubt the objective truth of the statements
contained therein which must be relied on for
enabling support. . . .
. . . .
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