Appeal No. 2005-0020 Page 5
Application No. 09/572,225
The Examiner separately rejects the claims in view of the phrase “positively controlled
conveyance” on the basis that Appellants have not provided a clear definition within the
specification and there is not even a suggestion that the terminology is art recognized (Answer,
p. 4). The Examiner maintains that the terminology is ambiguous to the extent that one of
ordinary skill would not envisage what types of equipment are encompassed or excluded by the
language (Answer, p. 4).
The question of whether one of ordinary skill in the art would understand what is
encompassed or excluded by the claim language is more relevant to the question of definiteness
under 35 U.S.C. § 112, ¶2 than to the question of written descriptive support under 35 U.S.C. §
112, ¶ 1. For the issue of written descriptive support under 35 U.S.C. § 112, ¶ 1, the relevant
question is whether the language of the original written description reasonably conveys to those
of ordinary skill in the art that Appellants had possession of the claimed invention at the time of
filing the application. When the appropriate inquiry is made, it becomes clear that the claims are
sufficiently supported as required. In the present case, the disclosure of specific mixer
apparatus, such as the stirrer fitted with rods disclosed in Example 2, indicates that Appellants
had possession of tubular reactors without positively controlled conveyance therefrom as
claimed (specification, p. 8, ll. 23-25 and Examples 2-5).
We conclude that the Examiner has failed to establish that the subject matter of claims
1-9 runs afoul of the written description requirement of 35 U.S.C. § 112, ¶ 1.
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