Appeal No. 2000-2013
Application No. 08/766,544
OPINION
A. The Rejection under 35 U.S.C. § 112, ¶1
The examiner finds that the negative limitation added during
prosecution of claim 17 is not supported by the original disclosure
(Answer, page 4). The examiner finds that there is no suggestion
in the original disclosure that appellants had possession of the
concept of forming “without supports for the projections” in the
context of appellants’ own process (id.).
Whether the requirement for an adequate written description
has been met is a question of fact and thus depends on the
particular facts of this appeal. See Wang Laboratories, Inc. v.
Toshiba Corp., 993 F.2d 858, 865, 26 USPQ2d 1767, 1774 (Fed. Cir.
1993).2 Appellants and the examiner agree that there is no literal
basis for the negative claim limitation recited in claim 17 on
appeal (Brief, page 9, footnote 1; Answer, page 6). However, the
initial burden of establishing a prima facie basis to deny
patentability to a claimed invention, regardless of the ground,
rests with the examiner. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Therefore it is incumbent
2See also Ex parte Parks, 30 USPQ2d 1235, 1236 (Bd. Pat.
App. & Int. 1994); cf., Ex parte Grasselli, 231 USPQ 393, 394
(Bd. Pat. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984).
3
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