Appeal No. 1996-1716
Application No. 08/344,532
broader term “major amount” (Final rejection, page 2, and the
Answer, page 3).
Appellant argues that the examples in the specification
“all detail compositions which may be said to comprise a
‘major amount’ of an epoxy resin” (Brief, page 10). Appellant
further argues that the disclosure in the original
specification at page 9, lines 1-8, of the range of
hydroxy:epoxy ratios for the claimed compositions clearly
supports the phrase “major amount” (Id.).
The initial burden of establishing a rejection for
failing to meet the description requirement of § 112, first
paragraph, must be carried by the examiner. In re Alton, 76
F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). An
ipsis verbis disclosure is not necessary to satisfy the
written description requirement of § 112. Appellant must
convey with reasonable clarity to those skilled in the art
that, as of the filing date, appellant was in possession of
the invention as now claimed. Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re
Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA
4
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