Appeal No. 2000-0019
Application 08/977,451
The Rejections
§112, First Paragraph
Claims 1-6 stand rejected under 35 U.S.C. §112, first paragraph, as containing
subject matter which was not described in the specification in such a manner as to
enable one skilled in the art to which it pertains, or with which it is most nearly
connected, to make and/or use the invention.
The Examiner states that claim 1 includes the limitation that the microspheres
have not been treated with a polyolefin chain degradation agent, and that the limitation
is unsupported in the specification (Examiner’s Answer, page 3, lines 7 – 10). The
primary issues with this added limitation, in the Examiner’s view, are that the chain
degradation agents are mentioned only by reference to a foreign application, and one of
skill in the art would have to perform undue experimentation when attempting to select
or exclude components having the desired properties.
The §112, first paragraph rejection, essentially stands or falls upon the issue of
whether the limitation of “wherein said microspheres have not been treated with a
polyolefin chain degradation agent prior to contact with said polyolefin composition” is
supported within the as-filed specification.
The adequate written description requirement of 35 U.S.C. Section 112, Para. 1,
provides that:
[t]he specification shall contain a written description of the invention, and of the
manner and process of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to make and use the same, and shall set forth
the best mode contemplated by the inventor of carrying out his invention.
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