Appeal No. 2004-0358 Page 3
Application No. 08/997,748
January 17, 2002.
On consideration of the record, including the above-listed materials, we affirm
the examiner’s rejections under 35 U.S.C. § 112, first paragraph, and 35 U.S.C.
§ 103(a).
35 U.S.C. § 112, first paragraph
According to the examiner, applicants’ claims are based on a specification which
does not provide adequate, written descriptive support for the invention now claimed.
The examiner argues that independent claims 94 and 95 were amended in Paper No.
10, received December 27, 1999, adding the language “a method for imaging the blood
stream” (emphasis added). The examiner further argues that applicants’ original
specification does not describe, explicitly or implicitly, a method for imaging the blood
stream. According to the examiner, the specification, as filed, does not convey to any
person skilled in the art that applicants were in possession of the subject matter now
claimed. We agree.
Having carefully reviewed the original specification, including the “Abstract of the
Disclosure,” the “Summary of the Invention,” the “Detailed Discussion” of the invention,
Examples 1 through 27, and claims 1 through 46 (now canceled), we agree with the
examiner’s finding that applicants’ specification does not describe as their invention a
method for imaging the blood stream within the meaning of 35 U.S.C. § 112, first
paragraph. The specification describes “new magnetic materials useful in medical
diagnoses” (page 2, lines 12 and 13, and agents which “meet the large number of
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