Appeal No. 2006-1820
Application No. 08/889,440
the art that appellant had invented the subject matter now claimed. Precisely how close the
original description must come to comply with the description requirement must be determined
on a case by case basis as a question of fact. In re Barker, 194 USPQ 470 (CCPA 1977), cert
den., sub. nom., Barker v. Parker, 197 USPQ 271 (1978); In re Wilder, 222 USPQ 369 (Fed. Cir.
1984), cert den., sub. nom.; Wilder v. Mossinghoff, 105 S. Ct. 1173 (1985).
We do not find the examiner’s assertions reasonable and therefore will not sustain the
rejections of claims 1, 3-9, 11-20, and 22-31 under 35 U.S.C. § 112, first paragraph, either under
the enablement clause or the written description clause.
The claims recite nothing about “combined” particles, reciting only particles “formed of
adsorbate particles and substrate particles.” Accordingly, the examiner’s remarks anent
“combined” particles are irrelevant to the instant claimed subject matter. To the extent the
examiner is stating that “formed” particles must be “combined” particles, we disagree. As
asserted by appellants, at page 6 of the brief, particles formed as adsorbate particles and substrate
particles are “well-known,” and the examiner has offered no evidence to rebut that allegation.
As we read the claim language, e.g., claim 1, line 2, a particle “ formed of adsorbate
particles and substrate particles” is recited. No specific “combination” is recited. It merely
states that there is a “particle” and that this “particle” is formed of at least two other particles,
one being an adsorbate particle and one being a substrate particle. Clearly, there is no problem
under the written description clause as the original claims (see original claims 1 and 2) contained
the recitation of a particle formed of substrate particles and adsorbate particles. An originally
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