Appeal No. 1997-0530
Application 08/312,493
Rejections under 35 U.S.C. § 112, first paragraph
A specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with
reasonable clarity to those skilled in the art that, as of the
filing date sought, the inventor was in possession of the
invention. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In
re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA
1978); In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96
(CCPA 1976).
The examiner argues that there is no written descriptive
support in appellants’ originally filed specification for the
recitation in the independent claims, i.e., claims 1, 7 and
10, that the copolymer “is distinct from the first and second
polymers” (answer, pages 2-3 and 8-10). This argument is not
well taken in view of the statement in the original
specification (page 3, lines 9-10) that “[t]he copolymer acts
as a compatibil-izing agent between the first and second
polymers.” In order for the copolymer to be effective as a
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