Appeal No. 1997-4285 Page 4
Application No. 08/420,852
The rejection under 35 U.S.C. § 112
We will not sustain the rejection of claims 9 and 10
under 35 U.S.C. § 112, first paragraph.
The examiner stated (answer, p. 4) that claims 9 and 10
were rejected under 35 U.S.C. § 112, first paragraph, "because
the term 'reactive settling agent' lacks clear antecedent
basis in the specification as originally filed."
The appellants argue (brief, pp. 4-5) that while the
phrase "reactive settling agent" may not be stated word for
word in the original specification, the phrase is supported by
the original specification, e.g., page 6, line 12 through page
7, line 23; page 9, lines 5-12.
The first paragraph of 35 U.S.C. § 112 states
The specification shall contain a written
description of the invention, and of the manner and
process of making and using it, in such full, clear,
concise, and exact terms as to enable any person skilled
in the art to which it pertains, or with which it is most
nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of
carrying out his invention.
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