Appeal No. 1996-0191
Application 08/001,697
also of record, have been withdrawn from consideration by the examiner under 37 CFR § 1.142(b). 3,4
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of claims 33 and 34 under 35 U.S.C. § 112, first paragraph, as the
specification as originally filed, does not provide support for the invention as is now claimed (answer,
pages 4 and 10-11). We find this rejection for lack of “support” to be based on the written description
requirement of § 112, first paragraph. See generally, Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991). In order to make out a prima facie case of failure
of the claims to comply with this section of the statute, the examiner must set forth “evidence or reasons
why persons skilled in the art would not recognize in the disclosure a description of the invention
defined by the claims.” In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed. Cir.
1996). Here, the examiner contends that the unlimited range in the phrase “the effective amount of cure
catalyst comprises at least about 0.01% based on the weight of the curable composition” appearing in
each of these claims “encompasses levels outside of the proportions” in the specific ranges set forth in
the second full paragraph on page 11 of the specification (answer, page 4). Appellants submit that one
of ordinary skill in this art would understand from the disclosure that “the amount of cure catalyst to be
used is an amount ‘effective to accelerate cure at the temperature employed’” coupled with the
3See answer, page 2, with respect to claim 8.
4The file of this application has been reconstructed with copies of Office communications submitted by
appellants. See the communication to appellants of October 8, 1996. Thus, appellants submitted a copy
of the examiner’s answer, mailed July 28, 1995 (Paper No. 12). On August 29, 1999, appellants
submitted a corrected brief (Paper No. 24) pursuant to the examiner’s communication of August 3,
1999 (Paper No. 23). The examiner, in his communication of August 31, 1999, designated Paper No.
25, acknowledged the corrected brief. This file also contains an examiner’s answer designated Paper
No. 26 which was not mentioned in the examiner’s communication of August 31, 1999 (Paper No.
25). This answer appears to be a modification of the original examiner’s answer (Paper No. 12) as it
acknowledges the new information submitted in appellants’ corrected brief and restates certain other
information with respect to the information in appellants’ brief required in 37 CFR § 1.192 (c) (1)
through (7) (1997). Since there is no indication that this supplemental answer was mailed to appellants,
a copy thereof was unofficially FAXed to them by the Board on March 7, 2000. In a following
telephonic communication on March 8, 2000, appellants acknowledged that the substantive content of
the two examiner’s answers with respect to the grounds of rejection is the same and thus our review of
this appeal is based on the original examiner’s answer (Paper No. 12).
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