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 -5-5Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007