Appeal No. 1999-2304
Application 08/667,242
essentially the reasons set forth in the briefs. The question
of the scope of the contested phrase in the independent claims
is not a proper basis for rejecting these claims on the
written description requirement of 35 U.S.C. § 112. The scope
of the claims should be addressed when considering
patentability over the prior art. The originally filed
specification clearly provides almost literal support for the
invention now being claimed by appellants. Therefore, we do
not sustain this rejection of the appealed claims.
To comply with the enablement clause of the first
paragraph of 35 U.S.C. § 112, the disclosure must provide an
adequate description such that the artisan could practice the
claimed invention without undue experimentation. In re
Scarbrough, 500 F.2d 560, 566, 182 USPQ 298, 303 (CCPA 1974);
In re Brandstadter, 484 F.2d 1395, 1407, 179 USPQ 286, 295
(CCPA 1973).
The rejection asserts that it would require undue
experimentation to make remote independent public directory
services having names and connection addresses of people
[answer, pages 5-6]. Appellants argue that the invention does
not require that anyone make a remote independent public
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