Appeal 2007-3196
Application 10/461,774
The language of claim 1 at issue with respect to each of the grounds of
rejection is “housing (3) having . . . only one outlet (2)” and “the at least one
adsorbate-containing medium flowing only tangentially over the entire outer
adsorbing surface of the adsorbent (5).” We interpret this language to mean
that housing 3 has only the single outlet 12, and that the adsorbate-
containing medium must flow tangentially over the adsorbing surface of flat
adsorbent 5 and not in any other direction with respect to that surface, that
is, into or through the adsorbing surface of flat adsorbent 5.
Considering first the ground of rejection of claim 1 under § 112, first
paragraph, written description requirement, we agree with Appellants that
the disclosure in the written description in the Specification with respect to
Examples 1-4 and Figs. 6-8 establishes that Appellants were in possession of
a process employing an apparatus providing tangential flow in a housing
having a single outlet. Specification 22:¶¶ 0063-0065, 24:¶0076, and
Figs. 6-8; Br. 4-5; Reply Br. 4. We find this disclosure sufficient to
establish that Appellants were in possession of the claimed adsorber
“housing (3) having . . . only one outlet (2)” as encompassed by claim 1 at
the time the Application was filed, see, e.g., In re Alton, 76 F.3d 1168, at
1175-76, 37 USPQ2d at 1581, 1583-584 (Fed. Cir. 1996) (citing In re
Wertheim, 541 F.2d 257, 262-64, 191 USPQ 90, 96-97 (CCPA 1976)), even
though, as the Examiner contends, the Specification discloses such language
as an adsorber housing having “at least one outlet.” Answer 5-6 and 10;
Specification 4:¶0010. In this respect, Appellants can amend the originally
claimed invention to avoid prior art or for other purposes where there is
adequate written description in the specification establishing that Appellants
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