Appeal No. 96-2673
Application No. 07/851,887
the claims stand rejected “for the reasons set forth in the
objection to the specification.”
There is no further explanation, anywhere, by the examiner
as to the particular language for which, allegedly, there is no
support. The "written description" portion of 35 U.S.C. ' 112
requires an inquiry to be made pertaining to whether the
disclosure (specification, claims and drawings) as originally
filed reasonably conveys to the journeyman practitioner in the
art that the inventor had possession at that time of that which
he now claims. See In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). The examiner has not referred to anything
specifically for which there is no original description. The
initial burden of showing unpatentability is always on the
examiner. Absent a reasonable basis, by the examiner, for
concluding that there is an inadequate written description,
appellant is under no duty to establish patentability. In the
instant case, the examiner has established absolutely no basis,
reasonable or not, for attacking the adequacy of the written
description. Accordingly, appellant should not be put in a
position to speculate as to exactly what claim language the
examiner finds a lack of support. Even so, appellant has
speculated, and, in our view, reasonably so, that the language
being attacked by the examiner is the language at the end of
claim 15 that was added by amendment, i.e., “the inverter and
load circuitry being additionally characterized by causing the
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007