Appeal No. 2000-0827
Application 08/466,104
applicant must . . . convey with reasonable clarity to
those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention."
Vas-Cath[, Inc. v. Mahurkar], 935 F.2d [1555,] 1563-64,
19 USPQ2d [1111,] 1117 [(Fed. Cir. 1991)].
In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996)(emphasis omitted). The examiner has the initial burden of
explaining why the disclosure as filed fails to describe the
subject matter recited in the rejected claims. See Alton,
76 F.3d at 1175, 37 USPQ2d at 1583:
The examiner (or the Board, if the Board is the
first body to raise a particular ground for rejection)
"bears the initial burden . . . of presenting a prima
facie case of unpatentability." In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Insofar as the written description requirement
is concerned, that burden is discharged by "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." [In re]
Wertheim, 541 F.2d [257,] 263, 191 USPQ [90,] 97
[(CCPA 1976)].
The examiner indicates (Answer at 3) that the rejection is
based on the following passages in In re Ruschig, 379 F.2d 990,
154 USPQ 118 (CCPA 1967):
Specific claims to single compounds require reasonably
specific supporting disclosure and while we agree with
the appellants, as the board did, that naming is not
essential, something more than the disclosure of a
class of 1000, or 100, or even 48, compounds is
required. Surely, given time, a chemist could name
(especially with the aid of a computer) all of the half
million compounds within the scope of the broadest
claim, which claim is supported by the broad
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