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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