Appeal No. 2004-0137
Application 10/073,321
OPINION
We reverse the aforementioned rejections.
Rejection under 35 U.S.C. § 112, first paragraph
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).
The examiner argues that the appellants’ original
specification fails to provide written descriptive support for a
composition which is “substantially free of any other component”
as required by claim 14 (answer, page 3). The examiner argues
that the specification indicates that the composition can include
about 20 wt% benzotrifluoride and about 20 wt% trichloroethylene
(page 2) and, therefore, can contain other components, and that
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