Ex parte ALSOP et al. - Page 5




              Appeal No. 1995-3232                                                                                        
              Application 07/954,686                                                                                      



              reasonably conveys to any person skilled in the art that the upper limit of the range of                    
              number average molecular weight is up to, but not including 8,000.  Furthermore, it is                      
              apparent that applicants prefer a number average molecular weight of less than 8,000.                       
              Again, see the specification, page 3, lines 21 and 22.  In our judgment, that stated                        
              preference is reasonably suggestive of a broader range which would include an upper limit                   
              of 8,000.                                                                                                   
                     On these facts, we find that applicants conveyed with reasonable clarity to persons                  
              skilled in the art that, as of the specification filing date, they were in possession of the                
              invention now claimed.   Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d                         
              1111, 1117 (Fed. Cir. 1991).  The rejection of claim 41 under          35 U.S.C.  112, first               
              paragraph, is reversed.                                                                                     


                                                    35 U.S.C.  103                                                       
                     As can be seen from a review of independent claim 41, and as emphasized in the                       
              preceding discussion, applicant's method requires the use of a physiologically acceptable                   
              mixture of glucose polymers with “a number average molecular weight of from 2,890 to                        
              8,000.”  Having reviewed the Milner patent in its entirety, we find that Milner constituents                
              insufficient evidence to support a conclusion of obviousness of claims containing that                      
              limitation.                                                                                                 

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