Appeal No. 1997-0008
Application 08/347,190
Lockwood, supra. With respect to the matter of predictability raised by appellant and to the
enablement issue raised by the examiner, it is well settled that compliance with § 112, first paragraph,
enablement requirement, is a separate issue from compliance with the written description requirement
and thus that the scope of enablement provided by a disclosure does not necessarily equate to the
description of an invention that one skilled in the art would reasonably recognize therein. See
generally, Vas-Cath, 935 F.2d 1555, 1561-64, 19 USPQ2d at 1115-17, and cases cited therein.
Accordingly, if one skilled in the art would find that the specific embodiment was the sole disclosure in
appellant’s specification pertaining to the claimed methods of claims 7 and 8, we would be in agreement
with the examiner’s position that one skilled in the art would not have reasonably recognized therein a
description of the invention encompassed by the claims, including all of the limitations thereof as stated
in the claims.
However, contrary to the position taken by the examiner and appellant, it is readily apparent
from the specification that the specific embodiment is not the “only possible source of support” in the
disclosure which would be considered by one skilled in this art with respect to the issue of compliance
with the written description requirement of § 112, first paragraph. While the examiner in his answer has
considered only that disclosure of the specification beginning at page 4 thereof (see supra p. 4), we
find that the thrust of appellant’s disclosure as set forth in the “Summary of the Invention” is “to solve
the problems in the above prior art and provide a toner for developing an electrostatic latent image
which is good in ease of clearing, namely, which can easily be removed from the surface of an image
carrier after transfer” (specification, page 4, lines 8-12; emphasis added). We further find that the
“above prior art” includes the “conventional” prior art methods involving the development of an
“electro-static latent image” into “a toner image by brushing with a so-called magnetic brush composed
of a developer” in conventional “developing means” and the “conventional” prior art processes for
“producing a toner constituting the aforesaid developer” disclosed in the “Background of the Invention”
(id., page 1, line 2, to page 4, line 6). We find that within the portion of the specification discussed by
the examiner in the answer, appellant discloses that the toner “for achieving the above objective” is
prepared by adding to the surface of toners of specified composition and size a “finely powdered
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007