Appeal No. 1997-0008
Application 08/347,190
stated as “the specification as originally filed does not provide support or written description for the
invention as currently claimed” (answer, page 3). While it may appear from this statement that the
ground of rejection involves both the written description and the enablement requirements of § 112, first
paragraph, the examiner has further stated in the answer (page 2) that “appellant’s statement of the
issues in the brief is correct,” that is, “[w]hether the original disclosure provides adequate ‘written
description’ support for claims 7 and 8 under [§ 112, first paragraph], and, more specifically, whether
there exists inherent support for the recitation in claim 7 of ‘the magnetic brush brushing the surface of
the photoconductive drum” (principal brief, page 6). Therefore, we find that the only ground of2
rejection before us is based on § 112, first paragraph, written description requirement. See generally,
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991).
In order to make out a prima facie case that the appealed claims do not comply with this
section of the statute, the examiner must set forth evidence or reasons why, as a matter of fact, persons
skilled in this art would not reasonably recognize in the disclosure in the specification a description of
the invention defined by the claims which establishes that appellant was in possession of the invention,
including all of the limitations thereof, at the time the original application was filed. See, e.g., In re
Alton, 76 F.3d 1168, 1175-76, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996). Appellant, in framing
the specification, is under no requirement to “utilize any particular form of disclosure to describe the
subject matter claimed.” Alton, 76 F.3d at 1172, 37 USPQ2d at 1581, and cases cited therein; see
also In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (“The objects of
the Invention may, in some cases, provide support for claims sought through reissue. [Citation
omitted.]”). However presented, the disclosure in the specification must be considered from the view
point of one skilled in the art, recognizing that that which is conventional in the art to this person need
not be disclosed and can be established by evidence. See, e.g., Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1571-72, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997) (“[T]he meaning of terms,
phrases, or diagrams in a disclosure is to be explained or interpreted from the vantage point of one
2We have considered the principal brief filed May 2, 1996 (Paper No. 24) which was considered by
the examiner (answer, page 1).
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