Appeal No. 1998-2451
Application No. 08/317,826
I. The 35 U.S.C. § 112, first paragraph (written description)
rejection of claims 1, 4, 5, 7-10, 13-16, 29-35, 48-35
Firstly, we note that the examiner must establish a prima
facie case that the claims do not comply with § 112, first
paragraph, written description requirement, by showing that the
written description in the application does not "convey with
reasonable clarity to those skilled in the art that, as of the
filing date sought, [applicant] was in possession of the invention
. . . now claimed." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); see also In re Alton,
76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir. 1996), In re
Wertheim 541 F. 2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In this
context, we provide the following determinations.
On page 3 of the answer, the examiner states that there is
lack of support for the now claimed phrase Aaluminum alkyl halide”.
This phrase is recited in step (b) of claims 1, 5, and 48. The
examiner states that the specification, on page 6, at lines 6-11,
indicates that the phrase Aaluminum alkyl halide@ is qualified by
formula (IV). This formula is set forth on page 6 of the
specification. The examiner concludes it should be so qualified in
the claims.
Upon our review of page 6 of the specification, we observe
that when p (in formula (IV)) is between the value of 1 and 2 3,
3 Appellants’ claim 2, for example, recites “p is between 1 and 2”.
4
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