Appeal No. 2002-1354
Application 08/668,264
immediately discerned the claim limitation at issue. Indeed, we cannot find in the written
description in the specification which describes the method of preparing “friction material” any
mention of “an organic solvent” and the examiner does not point to such disclosure.
Furthermore, appellants are certainly entitled to claim less than the invention originally presented
where the claimed invention to which they retreat complies with this statutory provision, as is the
case here. See generally, In re Johnson, 558 F.2d 1008, 1017-19, 194 USPQ 187, 195-96
(CCPA 1977). Thus, it follows that the examiner has failed to established a prima facie case that
the appealed claims do not comply with § 112, first paragraph, written description requirement,
and accordingly, we reverse this ground of rejection.
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CATHERINE TIMM )
Administrative Patent Judge )
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