Appeal No. 96-0706
Application 08/185,756
what is claimed." In re Gosteli, 872 F.2d 1008, 1012,
10 USPQ2d 1614, 1618 (Fed. Cir. 1989) (citation
omitted). Put another way, "the applicant must . . .
convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, he or she was
in possession of the invention." Vas-Cath [Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111
(Fed. Cir. 1991)] 935 F.2d at 1563-64, 19 USPQ2d at
1117. Finally, we have stated that "[p]recisely how
close the original description must come to comply with
the description requirement of section 112 must be
determined on a case-by-case basis." Eiselstein v.
Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed.
Cir. 1995) (quoting Vas-Cath, 935 F.2d at 1561, 19
USPQ2d at 1116).
76 F.3d at 1172, 37 USPQ2d at 1581 (footnote omitted).
Here, as in Alton, the examiner appears to have given little
or no weight to what he has characterized as allegations and
opinions of declarants skilled in the art. Each declarant’s use
of the words “it is clear to me”, just like the declarant’s use
of the prefatory phrase "it is my opinion" in Alton to preface
what someone of ordinary skill in the art would have known “does
not transform the factual statements contained in the declaration
into opinion testimony.” Similar to the situation in Alton, the
examiner here erred by dismissing the declarations
without an adequate explanation of how the declaration
failed to overcome the prima facie case initially
established . . . -- the rejection on the ground that
the application failed to describe the [claimed]
subject matter . . . . The examiner . . . "bears the
initial burden . . . of presenting a prima facie case
of unpatentability." In re Oetiker, 977 F.2d 1443,
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