Appeal No. 96-0706
Application 08/185,756
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Insofar
as the written description requirement is concerned,
that burden is discharged by "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. Thus, the burden placed on the
examiner varies, depending upon what the applicant
claims. If the applicant claims embodiments of the
invention that are completely outside the scope of the
specification, then the examiner or Board need only
establish this fact to make out a prima facie case.
Id. at 263-64, 191 USPQ at 97. If, on the other hand,
the specification contains a description of the
claimed invention, albeit not in ipsis verbis (in the
identical words), then the examiner . . ., in order to
meet the burden of proof, must provide reasons why one
of ordinary skill in the art would not consider the
description sufficient. Id. at 264, 191 USPQ at 98.
Once the examiner . . . carries the burden of making
out a prima facie case of unpatentability, "the burden
of coming forward with evidence or argument shifts to
the applicant." Oetiker, 977 F.2d at 1445, 24 USPQ2d
at 1444. To overcome a prima facie case, an applicant
must show that the invention as claimed is adequately
described to one skilled in the art. "After evidence
or argument is submitted by the applicant in response,
patentability is determined on the totality of the
record, by a preponderance of the evidence with due
consideration to persuasiveness of argument." Id. at
1445, 24 USPQ2d at 1444.
. . . The purpose of the adequate written
description requirement is to ensure that the inventor
had possession of the claimed subject matter at the
time the application was filed. If a person of
ordinary skill in the art would have understood the
inventor to have been in possession of the claimed
invention at the time of filing, even if every nuance
of the claims is not explicitly described in the
specification, then the adequate written description
requirement is met. For example, in Ralston Purina Co.
v. Far-Mar Co., Inc., 772 F.2d 1570, 1576, 227 USPQ
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