Appeal No. 94-3474
Application 07/956,126
not be described in haec verba to satisfy the description
requirement. In re Herschler, 591 F.2d 693, 700-701, 200 USPQ
711, 717 (CCPA 1979). All that is required to satisfy the
description requirement is that the originally filed disclosure
would have conveyed to one having ordinary skill in the art that
the appellant had possession of the concept of what is later
claimed. In re Anderson, 471 F.2d 1237, 1244, 176 USPQ 331, 336
(CCPA 1973).
The later claimed subject matter at issue in this case
consists of two expressions, each of which is a negative
limitation. It is well settled that negative limitations are not
impermissible per se, but may be permitted if indefiniteness and
undue breadth are avoided. Chisum on Patents, Vol. 3, Chapter
8.06[3], page 8-144 (1997). See Ex parte Hradcovsky, 214 USPQ
554, 555-56 (Bd. App. 1982); In re Duva, 387 F.2d 402, 408, 156
USPQ 90, 95 (CCPA 1967); In re Bankowski, 318 F.2d 778, 782-783,
138 USPQ 75, 79 (CCPA 1963). The examiner has not found the
expressions to be indefinite or impermissible per se, but not
supported by the specification as originally filed.
Appellant contends his process is a free-radical reaction
that is not conducted in the presence of UV radiation or “free-
radical generators” because a fair reading of his specification
11
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: November 3, 2007