Appeal No. 1998-2147
Application No. 08/247,356
Claims 28, 29, 36 and 37 are rejected under 35 U.S.C. § 112,
first paragraph, as containing subject matter which was not described in
the specification in such a way as to reasonably convey to one skilled in
the relevant art that the inventor(s), at the time the application was filed,
had possession of the claimed invention.
Contrary to applicant’s assertions, a review of the specification
and claims as originally filed did not reveal support for the following
limitations recited in claims 36 and 37:
“and exceeds 8,000 only when the photosensitive composition
containing the resin has sufficient photosensitivity and forms a resist
pattern which has sufficient resolution.”
[Quotation original, page 2].
The Examiner’s rejection appears to be based on the written description
requirement of 35 U.S.C. § 112, first paragraph. The Examiner also does not believe
the claims have an upper limit for the molecular weight because Appellants have not
defined what constitutes “sufficient photosensitivity” and “sufficient resolution.”
(Examiner’s Answer, page 19, lines 15-21).
In order for a claim to satisfy the written description requirement, the original
application must reasonably convey to those skilled in the relevant art that the
applicants, as of the filing date of the application, had possession of the claimed
invention. In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996);
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)).
However, the written description requirement does not require the applicants to
describe exactly the subject matter claimed in the original application. Instead, the
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