Ex parte SCOTT - Page 4




          Appeal No. 1997-1498                                                        
          Application No. 08/251,148                                                  


          to the examiner (Answer, page 3), “[t]he specification, as                  
          originally filed, does not provide express support for the                  
          ‘greater than about 30 mol%’ limitation added to claim 1."  On              
          the other hand, appellants argue (Brief, page 3) that:                      
                    On November 9, 1994, claim 1 of the present                       
               invention was amended to recite “wherein the amount of                 
               said 2,6-napthalene dicarboxylic acid in the acid                      
               component is greater than about 30 mol% when 1,4                       
               cyclohexane-dimethanol is present in said glycol                       
               component”.  Table 1, on page 12 of the application shows              
               that the clear compositions which contain CHDM (G1, H1,                
               I1, J1, and K1) have 32, 34, 66 and 100 mol% 2,6-                      
               naphthalenedicarboxylic acid (NA), respectively.  The                  
               amount of NA in G1 (32 mol%) is clearly about 30, and 34,              
               66 and 100 are clearly greater than about 30 mol %.                    
               Thus, the specification (specifically compositions G1-K1               
               of Table 1) clearly support the November 11, 1994                      
               amendment.  Reversal of the rejection based upon 112 is                
               requested.                                                             
               The purpose of the “written description requirement of 35              
          U.S.C.  112, first paragraph, is to ensure that applicants                 
          had possession, as of the filing date of the application                    
          relied on,  of the subject matter later claimed by them.  In                
          re Blaser, 556 F.2d 534, 537, 194 USPQ 122, 124-25 (CCPA                    
          1977).  Satisfaction of the “written description” requirement               
          does not require that the subject matter later claimed be                   
          described in exactly the same terms in the application as                   


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