Appeal No. 2002-0184 -7-
Application No. 09/058,537
With respect to the rejection under the first paragraph of § 112. it is well settled
that a specification complies with the 35 U.S.C. § 112, first paragraph, written description
requirement if it conveys with reasonable clarity to those skilled in the art that, as of the
filing date sought, the inventor was in possession of the invention. See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re
Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
There are two issues raised by the examiner. The first is that there is no basis for
the transitional phrase, “consisting essentially of.” Nonetheless, the examiner encourages
the appellants to remove the term “essentially” from the phrase, “consisting essentially of.”
This would appear in and of itself to be a contradiction. If there is no basis for the first
transitional phrase, it would appear that there is no basis for the second. Furthermore, the
language of the original claims and the specification in its description of the thermoplastic
fluoropolymer utilized the transitional phrase, “essentially comprising.” See original claim
1 and specification, page 3, lines 11-15. We find that the appellants intend to include
small amounts of other fluoromonomers. See specification, page 3, lines 11-15.
Accordingly, in view of the original language in the specification and the definition thereof,
the term, “consisting essentially of” is entirely appropriate to describe the claimed
fluoropolymer mixture.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007