Appeal 2006-2589
Application 10/618,499
The Examiner contends that the Specification does not have a
written description for the subject matter of claim 41. Specifically,
the Examiner states, (Answer 3), “[t]he amended claim 41
introduces the new limitation ‘about 0.1 to less than 2% by weight’
of the moisture content in the substrate, has no proper support in the
specification as originally presented”.
An ipsis verbis disclosure is not necessary to satisfy the
written description requirement of § 112. Instead, the disclosure
needs only to reasonably convey to persons skilled in the art that the
inventor had possession of the subject matter in question. See In re
Edwards, 568 F.2d 1349, 1351-52, 196 U.S.P.Q. 465, 467 (CCPA
1978). The Specification paragraph 0015 as originally filed clearly
discloses that “the dehydration step results in lignocellulosic
substrate 1 with a moisture content of less than 7% by weight, and
more preferably about 0.1-2.5% by weight”. We agree with
Appellants, (Brief 7), that the limitation “‘about 0.1 to less than 2%
by weight’” falls within the range disclosed in the above cited
portion of the Specification.
The Examiner has failed to adequately explain why the
portions of the Specification identified by the Appellants would not
have reasonably conveyed to a person of ordinary skill in the art the
scope of the presently invention claimed.
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