Appeal No. 95-0761
Application 08/050,511
Rejection under 35 U.S.C. § 112, first paragraph
The examiner argues that because appellant’s specification does not disclose any
meaningful information regarding the pigmented adhesive, and does not disclose substantive
criteria concerning making selections such as pigment colors, particle size ranges, concentrations
and degree of opacity, appellant’s disclosure does not meet the written description and
enablement requirements of 35 U.S.C. § 112, first paragraph (answer, pages 3-4).
A specification complies with the 35 U.S.C. § 112, first paragraph, written description
requirement if it conveys with reasonable clarity to those skilled in the art that, as of the filing date
sought, the inventor was in possession of the invention. See Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563-4, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-2, 196 USPQ 465,
467 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). “[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.
Appellant’s original specification discloses that a pigmented pressure sensitive adhesive is
used in appellant’s claimed article (page 6, line 15; original claim 4) and method (page 6, line 31;
original claim 1). Thus, the specification indicates that appellant was in possession as of his filing
date of an article and method in which a pigmented pressure sensitive adhesive is used. We
therefore find that the examiner has not carried his burden of establishing a prima facie case of
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