Appeal No. 2003-1280 4
Application No. 09/476,633
As an initial matter, it is the appellants position that, “[c]laims be grouped as
follows:
Group I: claims 1-4, 6-22 and 27-28; and
Group II: claims 23-26.” See Brief, page 3. Accordingly, we select claims 1 and 23 as
representative of the claimed subject matter. We also select claim 6 as representative of
the rejection under § 103(a) and limit our consideration to the three enumerated claims.
See 37 CFR §1.192(c)(7) (2001).
The Rejection under § 112
It is well settled that a specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, the inventor was in possession of the
invention. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed.
Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978);
In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
It is the examiner’s position that, “[t]here is no description in the specification as
originally filed of the used [sic, use] of hydrogen peroxide only.” See Answer, page 4. We
agree with the examiner’s position.
There are numerous references to hydrogen peroxide throughout the specification.
We find that “[a] rinsing solution comprising hydrogen peroxide is introduced.” See
specification page 4. We find that, “[f]igure 6 shows that the particle has been removed by
using a solution comprising hydrogen peroxide.” See specification, page 5, lines 17-18.
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