Appeal No. 1996-3982
Application No. 08/315,005
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. [Citations omitted.]
“One shows that one is ‘in possession’ of the invention by describing the invention, with
all its claimed limitations, not that which make it obvious.” [Citations omitted.]
Lockwood v. American Airlines Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961,
1966 (Fed. Cir. 1997).
In the present case, we believe appellants’ disclosure fails to reasonably
convey to one of ordinary skill in the art that appellants had possession of a process
for the preparation of a liquid developer, “wherein there is extracted from about 60
to about 78 weight percent of said liquid vehicle.” We determine that the disclosure
as originally filed does not convey to the artisan that the inventor has possession of
the aforementioned limitation.
Indeed, appellants’ principal argument is directed to the proposition that the
application contains support for the claimed range on page 1 which provides for a
solid content, “with a 50 or greater solids content.” See specification, page 1. We
determine that “50 or greater” does not provide support for the specific limitation
of “about 60 to about 78." In addition, appellants specifically rely on working
examples II and III wherein 39.1 milliliters and 18.8 grams of liquids were
respectively collected. See Brief, page 10. However, appellants have not
established that the proportions of liquid extract obtained by Examples II and III
respectively provide support for the limitation, “extracted from about 60 to about
78 weight percent of said liquid vehicle,” or are even relevant to those limitations.
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