Appeal 2006-2350
Application 10/444,104
Example 3 also provides support. As disclosed in paragraph 37, the
slurry CaCO3, and Na alginate slurry I can be redispersed after 96 hours.
The Examiner has the initial burden of presenting evidence of 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). It is the Examiner’s position that
because Example 4 provides data for slurries containing only one of the
calcium salts, i.e., calcium oxide, support is lacking for the other calcium
salts. But the problem with the Examiner’s analysis is that paragraph 41 is
more general in its discussion. While Example 4 presents data for only one
of the calcium salts, i.e., calcium oxide, this data, according to paragraph 41,
demonstrates results for the calcium salts as a group. The Examiner
provides no reason to disbelieve the broader statement in the Specification.
The written description requirement serves “to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific
subject matter later claimed by him; how the specification accomplishes this
is not material.” In re Wertheim, 541 F.2d at 262, 191 USPQ at 96. A
broad statement in the specification can suffice to convey to one of ordinary
skill in the art that an applicant had possession of the claimed subject matter.
The Examiner has also overlooked the disclosure of paragraph 37 which
indicates that CaCO3 containing slurry I of Example 3 is redispersable after
96 hours.
We find that the Examiner failed to provide sufficient evidence that
the claimed subject matter lacked written descriptive support as required by
35 U.S.C. § 112, ¶ 1.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013