Appeal No. 2000-0827
Application 08/466,104
Table IV (id. at 35-38) gives estimated Q values of 191
gases, including the three claimed gases, based on their
molecular weights (id. at 33, l. 27 to p. 35, l. 5). Eleven of
these gases have Q values of less than five, sixty-four gases
have values from five to twenty and the remaining 116 gases,
which include the three claimed gases, have values in excess
of twenty.
As explained below, the rejection is based in part on the
fact that the three claimed gases are included in the large
number of suitable gases identified in Table IV. The rejection
is also based on the examiner's contention that the use of human
protein to stabilize the microbubbles is one of a large number of
suitable "existing techniques" that the "Brief Description of the
Invention" (reproduced infra) indicates can be used to practice
Appellant's invention.
C. The rejection
Claims 48-56 stand rejected as based on a disclosure that
fails to provide a written description of the claimed subject
matter, as required by 35 U.S.C. § 112, first paragraph.
In order to meet the adequate written description
requirement, the applicant does not have to utilize any
particular form of disclosure to describe the subject
matter claimed, but "the description must clearly allow
persons of ordinary skill in the art to recognize that
[he or she] invented what is claimed." In re Gosteli,
872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir.
1989) (citation omitted). Put another way, "the
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