Appeal No. 1997-1538
Application 08/184,172
wherein n is 4-15;
a Mannich reaction product of the formula (VI),
R
(VI)
CH2NH(CH2CH2NH)r CH2CH2NH2
OH
wherein R is alkyl of 3-8 carbon atoms and r is 1-4; and
mixtures thereof.
The rejection under 35 U.S.C. § 112, ¶ 1
The examiner has rejected claims 13 and 16-22 under 35 U.S.C. § 112, ¶ 1, “for failing to
provide support in the specification” of the subject matter of claims 13 and 16-22.
The examiner’s statement that the claims fail to be “supported” by the specification is
ambiguous as to which of the requirements of the first paragraph of § 112 is thought not to have been
met. Based upon a review of the applicants’ brief and the examiner’s Answer, we assume that the
rejection is based upon an alleged failure to provide a written description for the requirement in claim
13 that the alcohol “is other than a glycol or 2,6-ditertiarybutylcresol.”
To comply with the written description requirement, the specification must provide information
that clearly allows persons having ordinary skill in the art to recognize that the applicant invented what is
claimed. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116 (Fed. Cir.
1991); In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). In Vas-Cath
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