Appeal No. 2001-1045 Page 11
Application No. 09/178,594
Appellants’ arguments seem directed more to the issue of enablement
than to written description or definiteness. The issue here is not whether those
skilled in the art would be aware that the claimed method could be practiced
using a broader range of R groups than is described by the specification. The
issue with respect to written description is whether “the applicant had
possession, as of the filing date of the application relied on, of the specific
subject matter later claimed by him.”
In re Blaser, 556 F.2d 534, 537, 194 USPQ 122, 124-25 (CCPA 1977).
Appellants’ argument provides no basis on which to conclude that the
specification meets this standard. Nor does it provides a basis on which to
conclude that the metes and bounds of the claims would be apparent to those
skilled in the art, as required by the second paragraph of 35 U.S.C. § 112.
With respect to Appellants’ second argument, it is not “unduly limiting” to
require an applicant to limit his claims to what is described as the invention in the
specification, or to require him to use language that has a definite meaning. On
the contrary, claims that are not so limited are unpatentable under 35 U.S.C.
§ 112 because they are inadequately described or indefinite.
Summary
We reverse the rejection based on the written description of the
catalyst, but affirm the rest of the examiner’s rejections.
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