Appeal No. 2006-1759 Παγε 5
Application No. 09/984,184
based on a recitation of the various types of materials from
which the polymer may be chosen as set forth in claim 44.
Accordingly, we reverse the examiner’s § 112, second paragraph
rejection of claim 44 for failure of the examiner to fairly
identify an issue of indefiniteness that, prima facie, pertains
to the so rejected claim.
Rejection under § 112, first paragraph
With regard to written descriptive support, all that is
required is that appellants’ specification reasonably convey to
one of ordinary skill in the art that as of the filing date of
the application, appellants were in possession of the presently
claimed invention; how the specification accomplishes this is not
material. See In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52,
196 USPQ 465, 467 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262,
191 USPQ 90, 96 (CCPA 1976). Concerning this matter, it is not
necessary that the application describes the presently claimed
invention exactly, but only sufficiently clearly that one of
ordinary skill in the art would recognize from the disclosure
that appellants invented it. See Edwards, 568 F.2d at 1351-52,
196 USPQ at 467; Wertheim, 541 F.2d at 262, 191 USPQ at 96.
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