Appeal No. 1996-3982
Application No. 08/315,005
On this record, we conclude that the specification provides a reasonable standard
for understanding the metes and bounds of the phrases, “process for the
preparation of a liquid developer consisting essentially of a hydrocarbon liquid
vehicle,” and “process for the preparation of a liquid developer consisting
essentially of a liquid vehicle . . . which process consists essentially of the
supercritical carbon dioxide solvent extraction of said liquid vehicle of said
developer and wherein said liquid developer possesses a high solids content . . . ,”
when the claim is read in light of the specification. Seattle Box Co. v. Industrial
Crating & Packing, Inc, 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir.
1984).
Similarly, with respect to claim 21, which is directed to “liquid developer
possesses a high solids content of from about 30 to about 100 weight percent,”
weight is given to the requirement that the developer must be liquid. Hence sufficient
liquid must be retained to maintain the developer in a liquid state.
Accordingly, we reverse the rejection of the examiner.
The Rejection under Section 112 -- Written Description Requirement
We turn next to the rejection of claims 23 and 24 under 35 U.S.C. § 112,
first paragraph, as lacking written descriptive support in the original disclosure for
the claims presently recited. As the court stated in In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983):
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
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