Appeal No. 96-3181
Application 08/251,963
grounds of rejection of the appealed claims except the ground of rejection of appealed claims 16 and 18
through 20 under 35 U.S.C. § 112, first paragraph. 2
While the examiner has premised his rejection of appealed claims 16 and 18 through 20 on the
basis that the specification, as originally filed, does not provide “support” for the invention as is now
claimed (answer, page 3, incorporating paragraphs 2-3 of the office action of November 8, 1995
(Paper No. 10) in that the term “pulsations” added to column 8, line 38, and the revised Figure 6 is new
matter (answer, pages 4-5), it is apparent to us that this rejection is based on the written description
requirement of § 112, first paragraph. See, generally, Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991); In re Wertheim, 541 F.2d 257, 265, 191 USPQ
90, 99 (CCPA 1976). In order to make out a prima facie case of failure of the claims to comply with
this section of the statute, the examiner must set forth “evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the invention defined by the claims.” In re Alton,
76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996), quoting Wertheim, 541 F.2d at
263, 191 USPQ at 97.
We find that appealed claims 16 and 18 through 20 encompass methods of treating pulp utilizing
a wire-surfaced filter cylinder. We construe these claims to require in “step (d)” that the pulp web is
removed from the wire-surfaced filter cylinder with a flexible wiper (claims 16 and 18 through 21)
wherein “pressure pulsations” are provided from the interior of the wire surface of the cylinder which
cause radial movement of the tip of the wiper toward and away from the wire surface of the cylinder
(claims 16, 18 and 20) and/or provided when each wall between adjacent filter compartments is rotated
past the tip of said wiper (claims 18 through 20). The only contentions advanced by the examiner in
support of his position that the methods defined by the appealed claims lack “support” in the
specification with respect to these limitations, thus violating § 112, first paragraph, written description, is
that the “specification of [the] original patent does not recite ‘pulsation’” and “a slight increase in the
space 98 is not [the] same as ‘pulsation’” (answer, pages 4-5). With respect to the examiner’s first
contention, it has long been settled that the examiner must provide “reasons why a description not in
2 Answer (Paper No. 13; page 2, and Letter of June 12, 1998 (Paper No. 23).
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