Appeal No. 1997-2167
Application 08/137,444
meaning of 35 U.S.C. § 112, first paragraph. Only objective
enablement is required.
To the extent the position taken by the examiner is that
appellants' claims may include inoperative embodiments we
observe that it has been held that, even assuming it could be
established that the claims do embrace some inoperative
embodiments, it is not the function of the claims to
specifically exclude all possible inoperative substances or
ineffective amounts and proportions. See, Atlas Powder Co. v.
E.I. Du Pont de Nemours & Co, 750 F.2d 1569, 1576, 224 USPQ
409, 414 (Fed. Cir. 1984) citing In re Dinh-Nguyen, 492 F.2d
856, 858, 859, 181 USPQ 46, 48 (CCPA 1974). Accordingly, for
all the above reasons, we reverse the rejection of claims 1
through 52 under 35 U.S.C. § 112, first paragraph.
THE "WRITTEN DESCRIPTION' REJECTION UNDER § 112
The examiner has rejected claims 1 through 4 under the
first paragraph of 35 U.S.C. § 112. It is the examiner's
position that the newly added "provisos" to claims 1 through 4
which limit the definition of certain substitutents when R is2
2 3
hydroxy or when R is hydroxy and R is hydrogen are not
"described" in the sense of the statute in appellants'
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