Appeal No. 1997-2063
Application No. 08/433,818
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111,
1116 (Fed. Cir. 1991). In the present case, our review of
appellants' specification as a whole, including the discussion
provided in the BACKGROUND OF THE INVENTION, leads us to conclude
that appellants had in their possession, at the time of filing
the parent application, the superconductive materials recited in
claims 16, 25 and 30. In particular, the paragraph bridging
pages 1 and 2 of the present specification discusses newer
superconductive compounds containing four metallic elements,
including bismuth or thallium instead of a rare earth element.
In the second paragraph at page 1 of the specification the known
superconductive materials, R1Ba2Cu3O7, are discussed. In our
view, the specification describes appellants' invention as
replacing a strontium titanate substrate with one of lanthanum
aluminate for such known superconductive materials. Hence, we
find that the superconductive materials defined by claims 16, 25
and 30 are fairly described in appellants' specification within
the meaning of 35 U.S.C. § 112, first paragraph.
In conclusion, the examiner's rejections under 35 U.S.C.
§ 112, first paragraph, are reversed. Since we have sustained
the examiner's rejection of all the appealed claims under the
judicially created doctrine of obviousness-type double patenting,
the examiner's decision rejecting the appealed claims is
affirmed.
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