Appeal No. 95-2910
Application 08/084,337
description requirement, the invention is "whatever is now
claimed." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991). The examiner 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. Once the
examiner points out that the claimed embodiment is outside the
scope of the specification description, the examiner has
satisfied his burden of proof. Then the burden of proof
shifts to the applicant to show that the claimed invention is
part of the description. In re Wertheim, 541 F.2d 257, 265,
191 USPQ 90, 98 (CCPA 1976).
The examiner has taken a position that the originally
filed application supports an invention which is separate and
apart from the invention now being claimed. In other words,
although the examiner admits that the amendments made by
appellants support an invention, the examiner is of the view
that the originally filed application supported a completely
different invention and not the currently claimed one.
Appellants argue that the originally filed application
supports their position that the “less than” recitation in the
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