Ex parte NOBUAKI MATSUDA et al. - Page 5




             Appeal No. 95-3623                                                                                   
             Application 07/714,407                                                                               


             191 USPQ at 96.  “[T]he PTO has the initial burden of 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.”  Wertheim, 541 F.2d at 263, 191 USPQ at                                      
             97.  Precisely how close the original description must come to                                       
             comply with the  112 written description requirement must be                                        
             determined on a case-by-case basis.  See Vas-Cath Inc. v.                                            
             Mahurkar, 935 F.2d 1555, 1562, 19 USPQ2d 1111, 1116 (Fed. Cir.                                       
             1991).                                                                                               
                    As stated by the examiner (answer, page 7), appellants’                                       
             specification provides written descriptive support for use of an                                     
             acetylenic alcohol surface active agent in combination with a                                        
             quaternary ammonium salt surface active agent.  The specification                                    
             discloses (pages 7-9) that each of the acetylenic alcohol surface                                    
             active agent and quaternary ammonium salt surface active agent                                       
             can be used in combination with other types of surface active                                        
             agents, and states (page 5): “Preferably, the developing solution                                    
             comprises an acetylenic alcohol based surface active agent.  Also                                    
             preferably, the developing solution comprises a quaternary                                           
             ammonium salt based surface active agent.”  These teachings,                                         
             taken together, reasonably convey to one of ordinary skill in the                                    
             art that appellants were in possession as of their filing date of                                    

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