Appeal No. 2003-1038
Application No. 09/262,628
2001, paper 10, appendix.) These amended claims are now on
appeal.
The examiner’s basic position is that the specification
(including the claims), as originally filed, lacks adequate
support for the invention as is now recited in the appealed
claims. Specifically, the examiner finds that while the
originally filed specification describes a broad genus of
polymers that may encompass “fluoroplastics,” it does not
contain sufficient descriptive support for subject matter
restricted to orthodontic articles comprising a “fluoroplastic.”
The appellants, on the other hand, argue that the
“Background of the Invention” as well as a particular disclosure
in Grootaert ’002 provide evidence that all of the fluoropolymer
species described in the originally-filed specification are in
fact “fluoroplastics” and that, therefore, a person having
ordinary skill in the art would have appreciated upon reading
the specification that the appellants, at the time of filing,
had possession of the invention now claimed. (Appeal brief,
pages 8-9.)
We cannot agree with the appellants on this issue.
While the appellants are correct in stating that an
applicant does not have to describe exactly the subject matter
claimed to satisfy the written description requirement of 35
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