Ex Parte Augenstein - Page 5

                Appeal 2007-2235                                                                                   
                Application 10/138,617                                                                             

                is measured in the waste mass and the aqueous amendment is added based                             
                on the oxygen consumed” (Answer 4).  The Examiner urges that “[t]he                                
                originally filed disclosure implies that the amount of water to be added has                       
                been previously determined prior to performing the treatment process while                         
                the instant claims reflect that the oxygen consumption is measured and the                         
                amendment addition is adjusted according to the measurement performed                              
                during the process” (id. at 4-5).                                                                  
                       Appellant argues that original claim 7 and paragraphs 44 and 45 of the                      
                Specification provide adequate support for the steps presently recited in                          
                claim 7 (Br. 6).  Specifically, Appellant urges that “[i]t is a key inventive                      
                insight disclosed in this patent application that the amount of water that                         
                should be provided is linked to the amount of oxygen consumed in the                               
                landfill.  The links of logic leading to this insight are disclosed in paragraphs                  
                44 and 45” which disclose that “one can calculate a figure of about 60-200                         
                grams of water that must be evaporated per gram-atom oxygen consumed to                            
                dissipate the heat produced by the oxygen-consuming biodegradation                                 
                reactions” (id. at 7).  Because original claim 7’s step of providing the landfill                  
                with 50 to 120 ml of water per gram atomic weight of consumed oxygen                               
                necessarily requires measuring the water and the oxygen, Appellant argues,                         
                “there is clear implicit, and probably also inherent, support for measuring                        
                oxygen consumption” (id. at 8).                                                                    
                       “[T]he applicant must . . . convey with reasonable clarity to those                         
                skilled in the art that, as of the filing date sought, he or she was in possession                 
                of the invention.  The invention is, for purposes of the ‘written description’                     
                inquiry, whatever is now claimed.”  Vas-Cath Inc. v. Mahurkar, 935 F.2d                            


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