Appeal No. 98-3225 3
Application No. 08/204,162
application was filed, had possession of the claimed invention.
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner and agree with the appellants that the rejection of the claims as being
unsupported is not well founded. Accordingly, we reverse this rejection.
As an initial matter the appellants have stated that all the claims on appeal stand or
fall together. Accordingly, we select claim 6 the sole independent claim as representative
of the claimed subject matter and limit our consideration thereto. See 37 CFR
1.192(c)(7) (1995).
The Rejection under 35 U.S.C. § 112
The examiner has first rejected the claims on appeal under 35 U.S.C. § 112, first
paragraph, as, “[t]he examiner has not found support within the specification requiring
that both polyols have hydroxyl numbers no greater than 100.” See Answer, page 4.
We note that the language of this rejection is equivalent to stating that appellants’
disclosure fails to meet the “written description” requirement of 35 U.S.C. § 112, ¶1.
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed.
Cir. 1991).
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