Appeal No. 94-1863
Application 07/832,154
§ 112, first paragraph, based on a lack of written description
for the limitation "at least three other oxides."
Claims 1 to 8 and 10 to 16 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over van der Wal.
After having carefully considered the positions and
arguments presented by both the examiner and appellants, we
conclude that the rejection under 35 U.S.C. § 112, first
paragraph, should not be sustained, while the rejection under 35
U.S.C. § 103 over van der Wal should be sustained. We add the
following comments for emphasis.
An application disclosure is directed to one skilled in the
art. Chemcast Corp. v. Arco Indus. Corp., 913 F.2d 923, 926, 16
USPQ2d 1033, 1036 (Fed. Cir. 1990). In order to satisfy the
written description requirement of 35 U.S.C. § 112, an
application must reasonably convey to the artisan that the
applicant had possession of the claimed subject matter at the
time the application was filed. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
It is the examiner's position that appellants' disclosure
does not contain a written description for the limitation, "at
least three other oxides of elements selected from the first,
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