Appeal No. 2000-2076 Page 5
Application No. 08/481,131
8. For such particulate ultrasound contrast agents, the most relevant
property for achieving contrast enhancement would have been understood to be
compressibility as this is the property which allows ultrasound energy to be
absorbed and reemitted, ie. “reflected”, to use the word used in claim 4 of the
published text. The material used as the ultrasound contrast agent must react to
pressure, ie. compress, much like a spring, converting sound energy to potential
energy, and then it must release that energy as ultrasound.
9. Simply put, while the contrast agent could be solid, a liquid or a gas, since
the compressibility of a gas is so much greater than that of a solid or liquid, the
person skilled in the field of ultrasound and understanding the physical nature of
dispersions at the priority date would have been in no doubt that the first choice
of an ultrasound contrast agent (for enclosure in a matrix in accordance with
claim 4 of the published text) would have been a gas, or more particularly a gas
bubble. [Balinov Declaration, paragraphs 8 and 9, emphasis added]
Couched in terms of the case law, Balinov’s Declaration supports a finding that
(1) applications’ specification, as filed, reasonably conveys to the artisan that the
inventors had possession at that time of the later claimed subject matter; and (2) any
person skilled in the art, reading the original disclosure, would “immediately discern” the
limitation at issue in the claims.
All in all, we believe that the weight of the evidence supports a finding that “a
gaseous contrast agent” recited in claim 11 enjoys adequate, written descriptive support
in applicants’ original disclosure. On the strength of the Balinov Declaration, we reverse
the examiner’s rejection of claims 11, 12, 14, 15, and 19 through 36 under 35 U.S.C.
§ 112, first paragraph, for lack of adequate written description in the specification as
filed.4
4 Our reversal is not predicated on the Edwards et al. article, referenced at page 3, first full paragraph of
the specification; on applicants’ summary of that article, added by way of amendment in Paper No. 18,
received October 14, 1997; or on any argument pertaining to Edwards et al. The issue whether material
added to the specification, page 3, first full paragraph, constitutes new matter, is severable from the issue
on appeal. The former issue is petitionable, not appealable. See the Examiner’s Answer (Paper No. 30),
paragraph bridging pages 5 and 6.
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