Appeal No. 1997-2193
Application 07/986,648
skilled in the art by the disclosure. Wertheim, 541 F.2d at
262, 191 USPQ at 96. We find appellants have satisfied the
written description requirement of 35 U.S.C. § 112, first
paragraph.
THE IMPROPER MARKUSH REJECTION
The examiner bases his rejection of the claims as being
drawn to an improper Markush group in part on the decision in
In re Harnisch, 631 F.2d 716, 206 USPQ 300 (CCPA 1980).
However, we first note that in Harnisch, 631 F.2d at 720, 206
USPQ at 304, the court specifically held that:
"there is no “doctrine” to be considered but only a
body of case law emanating from both “higher” and
“lower” authority, not altogether consistent, the
latest decisions tending to carry the most weight as
precedent."
Notwithstanding this holding, the court did recognize the
possibility that there could be such a thing as an improper
Markush group and further recognized that each case involving
the propriety of a Markush group must be considered on its own
facts, and cited In re Jones, 162 F.2d 479, 74 USPQ 149 (CCPA
1947) in support of its conclusion. Thus, we must determine
if the examiner's factual determinations with respect to the
claimed "Markush group" are sound and, if sound, whether or
not they give rise to the conclusions made by the examiner.
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007