Appeal No. 1996-4058
Application No. 07/837,619
each of the independent claims, now before us, contains the
above terminology.
While the examiner has premised his rejection of the
appealed claims on the basis that the specification as
originally filed, does not provide “support” for the invention
as now claimed in that there is no positive statement that the
claimed alloys are oxidation resistant at 1550EC, it is
apparent to us that the sole rejection before us is based upon
the written description requirement of § 112, first paragraph.
See, 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. The only contentions advanced by the examiner
in support of his position that the claimed subject matter
lacks “support” are lack of a “positive statement,” Final
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