Appeal No. 2003-1625
Application No. 09/341,669
references include core/shell polymers. The appellants’ position
is not well founded.
The written description requirement in the first paragraph
of Section 112 demands that an applicant must convey with
reasonable clarity to those skilled in the art that the
applicant, as of the filing date sought, was in possession of the
presently claimed invention. Vas-Cath, Inc. v . Mahurkar, 935
F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991). In
the context of claimed subject matter which is defined by way of
negative limitations, such limitations must not introduce new
concepts and thereby violate the written description requirement
of Section 112, first paragraph. See In re Anderson, 471 F.2d
1237, 1244, 176 USPQ 331, 336 (CCPA 1973) and Ex Parte Grasselli,
231 USPQ 393, 394 (Bd. App. 1983).
We fully share the examiner’s view that the claim 32
recitation “which is not a core/shell polymer” introduces new
concepts the possession of which by the appellants would not have
been conveyed via the original specification disclosure to those
skilled in the art. In support of their opposing view, the
appellants argue that “[t]he description in the specification on
page 8 [and] in the examples are considered to be sufficient
basis for this [claim 32] limitation since a core/shell polymer
7
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