Appeal No. 1996-2598
Application No. 08/220,212
October 18, 1995) for the examiner’s reasoning in support of the rejections and to the appellants’ brief
(Paper No. 8, filed March 30, 1995), to the appellants’ reply brief (Paper No. 12, filed
August 1, 1995) and to the appellants’ supplemental reply brief (Paper No. 15, filed
November 17, 1995) for the appellants’ arguments thereagainst.
Appellants’ claimed invention is directed to a selective and differential medium for the isolation
of Listeria monocytogenes (brief, page 2).
OPINION
I. Rejection of claims 5-10 under 35 U.S.C. § 112, first paragraph, based on new matter
because of a lack of adequate written description of the claimed invention in the
specification as originally filed.
The test for determining compliance with the written description requirement is whether the
disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter, rather than the presence or absence of literal
support in the specification for the claim language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983).
According to the examiner there is no basis or support in the specification for the exclusion of
phenylethanol from the claimed composition (answer, page 6). Appellants argue that page 15 of the
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