Appeal No. 95-3623
Application 07/714,407
191 USPQ at 96. “[T]he PTO has the initial burden of presenting
evidence or reasons why persons skilled in the art would not
recognize in the disclosure a description of the invention
defined by the claims.” Wertheim, 541 F.2d at 263, 191 USPQ at
97. Precisely how close the original description must come to
comply with the § 112 written description requirement must be
determined on a case-by-case basis. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1116 (Fed. Cir.
1991).
As stated by the examiner (answer, page 7), appellants’
specification provides written descriptive support for use of an
acetylenic alcohol surface active agent in combination with a
quaternary ammonium salt surface active agent. The specification
discloses (pages 7-9) that each of the acetylenic alcohol surface
active agent and quaternary ammonium salt surface active agent
can be used in combination with other types of surface active
agents, and states (page 5): “Preferably, the developing solution
comprises an acetylenic alcohol based surface active agent. Also
preferably, the developing solution comprises a quaternary
ammonium salt based surface active agent.” These teachings,
taken together, reasonably convey to one of ordinary skill in the
art that appellants were in possession as of their filing date of
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