Appeal NO. 1996-3683
Application 08/207,393
(describe) later claimed narrower subject matter. Fujikawa v.
Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed.
Cir. 1996). The direction leading one to the later claimed
narrower subject matter must be expressed in "full, clear,
concise and exact" language. See Fields v. Connover, 443 F.2d
1386, 1391, 170 USPQ 276, 280
(CCPA 1971); In re Albrecht, 435 F.2d 908, 911, 168 USPQ 293,
296 (CCPA 1971); Ruschig; 379 F.2d at 996, 154 USPQ at 123.
Accordingly, upon return of this application to the
examining group and after resolving what is meant by "free
carboxyl group" as raised in the rejection under 35 U.S.C. §
112, second paragraph, the examiner should consider whether or
not appellants' now claimed subject matter is "described" by
their original disclosure. The examiner should consider
whether appellants' broad disclosure of compounds which
contain "free carboxyl groups" generally as useful binders
coupled with appellants' disclosure of two suitable "free
carboxyl group" containing thermoplastic binders and the
exemplification of two proprietary products of unknown
chemical composition reasonably conveyed to a person of
ordinary skill in the art that appellants were possessed, as
of their filing date, March 20, 1989, of the subject matter
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