Appeal No. 2003-1640
Application 09/634,692
does not have to describe the invention later claimed in haec verba, but such written description
“must . . . convey with reasonable clarity to those skilled in the art that . . . [appellant] was in
possession of the invention . . . now claimed.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); see also Purdue Pharma L.P. v. Faulding
Inc., 230 F.3d 1320, 1323, 56 USPQ2d 1481, 1483 (Fed. Cir. 2000); Wertheim, 541 F.2d at
262-65, 191 USPQ at 96-98. Where “the specification contains a description of the claimed
invention, albeit not in ipsis verbis (in the identical words), then the examiner or the Board, in
order to meet the burden of proof, must provide reasons why one of ordinary skill in the art
would not consider the description sufficient.” Alton 76 F.3d at 1175-76, 37 USPQ2d at 1583.
In order to establish a prima facie case, the examiner or the Board need only establish that as a
matter of fact, appellant “claims embodiments of the invention that are completely outside the
scope of the specification.” See Alton 76 F.3d at 1175-76, 37 USPQ2d at 1583.
We determine that the examiner’s ground of rejection under § 112, first paragraph, is
based on the written description requirement because it seems to us that the examiner’s concern
is whether the written description of the specification describes “in detail” embodiments
specified by the limitations in the appealed claims subject to this ground of rejection ( answer,
e.g., pages 4, 11, 13, 14 and 16). However, we are of the view that to the extent that the
examiner has established a prima facie case that the written description in appellant’s disclosure
would not reasonably convey to persons skilled in this art that appellant was in possession of the
embodiments encompassed by the here rejected appealed claims to one skilled in this art,
appellant has submitted rebuttal argument in the brief (pages 9-13) establishing that as a matter
of fact, the written description in the specification does establish possession of the embodiments
at the time the application was filed with respect to appealed claims 18, 20 and 21.
With respect to appealed claims 23 and 25, we find that, as the examiner points out
(answer, pages 16-17), the passage at page 12, lines 4-17, in the specification which describes the
function and some structure of “trim adjuster 290” as shown in specification Fig. 11,2 taken in
light of appellant’s arguments at page 13 of the brief with respect thereto, does not establish that
2 We fail to find in appellant’s specification a description of numerals 292, 294 and 298
associated with “trim adjuster 290” in specification Fig. 11.
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