Appeal 2007-1073
Application 10/308,176
DISCUSSION
1. WRITTEN DESCRIPTION
Claims 104-108 stand rejected under 35 U.S.C. § 112, first paragraph,
as containing subject matter which was not described in the specification in
such a way as to reasonably convey to one skilled in the relevant art that the
inventor had possession of the invention.
The Examiner contends that Appellants’ preliminary amendment of
May 19, 2004 inserted new matter into the claims because the specification
as filed does not support the claim limitation, "about 50% MIGLYOL 812
by weight, about 50% tocopherol PEG-1000 succinate by weight." Answer
4. The Examiner acknowledges the original specification disclosed in claim
48, "MIGLYOL 812 is present in an amount from 60-80% by weight" and
"tocopherol PEG.-1000 succinate is present in an amount of 25% at page 23
of the specification or 15%, 24%, 22%, 20% at page 25 of the specification."
(Id.)
Appellants contend that because each of the limitations was present in
the specification, Appellants were in possession of the subject matter of the
invention at the time of filing the application. (Br. 10.)
Appellants further argue that, "[t]he value of 'about 50% by weight'
for the lipophilic phase component and the surfactant is expressly stated in
the specification. '[T]he literal description of a species provides the requisite
legal foundation for claiming that species.'" Snitzer v. Etzel, 465 F.2d 899,
902, 175 USPQ 108, 111 (CCPA 1972).” (Br. 11.)
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013