Appeal No. 96-0654
Application 08/103,207
Paulsen, 30 F.3d 1475, 1479, 30 USPQ2d 1671, 1674 (Fed. Cir.
1994). Furthermore, we emphasize that the description
requirement of the first paragraph of 35 U.S.C. § 112 is to
ensure that the inventor had possession, as of the filing date
of the application relied on, of the specific subject matter
later claimed by him and does not require that terms be used
according to their ordinary meaning. Therefore, we will not
sustain the Examiner's rejection of claims 1, 5, 6, 9, 11 and
12 under
35 U.S.C. § 112, first paragraph, for being directed to
subject matter that has not been described at the time of the
filing.
In regard to the rejection under 35 U.S.C. § 103, the
Examiner has failed to set forth a prima facie case. It is
the burden of the Examiner to establish why one having
ordinary skill in the art would have been led to the claimed
invention by the express teachings or suggestions found in the
prior art, or by implications contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining
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