Appeal No 94-1046
Application 07/747,456
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983). However, compliance with the description requirement does
not require that the invention be described ipsis verbis in the
specification. In re Lukach, 442 F.2d 967, 969, 169 USPQ 795,
796 (CCPA 1971). The first paragraph of Section 112 only
requires that the description in the specification would have
clearly allowed persons skilled in the art to recognize that
applicants invented the subject matter claimed. In re Gosteli,
872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989).
The examiner has the initial burden to explain why persons
skilled in the art would not have recognized a description of the
compound defined by formula 1 of Claim 1 in the specification.
In re Gosteli, supra; In re Wertheim, 541 F.2d 257, 263, 265,
191 USPQ 90, 97, 98 (CCPA 1976). Thus, faced with the
qualitative data in the specification and identical limitations
in Claim 1, including the NMR and IR spectroscopy and optical
rotation information presented in Table II at page 14 of the
specification, the argument by the examiner that formula 1 of
Claim 1 is not drawn in precisely the same manner as formula 1
on page 2 of the specification does not itself satisfy the
examiner’s burden to explain why applicants’ specification would
not have described the compound presently claimed to persons
skilled in the art. This is especially true when, as here,
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