Appeal No. 94-3399
Application 07/871,374
For example, in the amendment of claim 1, the
phrases, “photolitographic process using light from
a partially coherent lens”, and the language added
at lines 16-27, are not supported by the
specification.
In response, appellants argued that such limitations and other
limitations in claims 1 and 3 through 12 were reasonably
conveyed by the original disclosure. See Brief, pages 11-22.
In support of their position, appellants referred to certain
descriptions in the original disclosure. Id. However, the
examiner did not explain why each and every description
referred to by appellants did not reasonably convey the claim
limitations in question. See the entire Answer. Rather, the
examiner made conclusory statements and improperly shifted the
burden to appellants. Id. As aptly stated in Ex parte
Sorenson, 3 USPQ2d 1462, 1463 (Bd. Pat. App. & Intf. 1987),
"the only reasoning presented which we can discern is an
example of ipse dixit reasoning, resting on a bare assertion
by the examiner." Procedurally, the examiner simply has not
met his initial burden of establishing a prima facie case of
unpatentability. Accordingly, we are constrained to reverse
the rejection of claims 1 and 3 through 12.
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