Appeal No. 2002-1354
Application 08/668,264
and based on our review, find that we cannot sustain the rejection of appealed claims 1, 3 through
8, 22 and 24 through 28,1 all of the claims in the application, under 35 U.S.C. § 112, first
paragraph, written description requirement.2 For the reasons pointed out by appellants in the
brief and reply brief, the examiner has failed to make out a prima facie case with respect to this
ground of rejection.
In stating the ground of rejection, the examiner takes the position that the claim language
“[a] friction material . . . manufactured without the use of an organic solvent,” as set forth in
illustrative claim 1, “lacks written description in the specification as originally filed and addition
of this phrase constitutes new matter” without further supporting the rejection (Paper No. 26,
page 2; answer, page 4). Appellants point out in the brief that the written description in the
specification identifies a problem with solvents and sets forth a method of making the claimed
friction material without reference to a solvent (pages 4-6). The examiner responds in the answer
by pointing out that “[t]he specification does not actually teach that no noxious or organic solvent
is employed nor is it inherent in the specification that no such solvent is employed,” and that a
solventless method “is merely one of several probabilities or possibilities . . . [and] [i]nherency
may not be established by possibilities or probabilities” (answer, page 4). Appellants again point
out in the reply brief that no solvent is used in the method of making the “friction material” in the
specification.
It is well settled that while the written description does not have to describe the invention
later claimed in haec verba, such written description “must . . . convey with reasonable clarity to
those skilled in the art that . . . [appellant] was in possession of the invention now claimed.”
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991);
see also Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483
(Fed. Cir. 2000); In re Wertheim, 541 F.2d 257, 262-65, 191 USPQ 90, 96-98 (CCPA 1976).
Where the claimed invention is alleged by appellants to be based on an inherent limitation,
1 See illustrative claim 1 in the amendment of February 26, 2001 (Paper No. 25).
2 In the Answer, the examiner refers to the Office action of March 29, 2001 (Paper No. 26, page
2) for a statement of the ground of rejection advanced on appeal (page 4), and withdraws the
ground of rejection of all of the appealed claims under 35 U.S.C. § 103(a) over Royer (page 3).
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Last modified: November 3, 2007