Appeal No. 1997-0008
Application 08/347,190
possessed any method broader than that of pages 9 and 10. The specie does not show
possession of the claimed genera. [Answer, pages 6-7.]
The examiner states that appellant’s “declaration provides conclusions without any scientific statement
of fact about what the specification describes” and is of the opinion that “[a]lthough the patent cited by
appellant . . . produces a magnetic brush which contacts the photosensitive member, the patent does
not use the same process characteristics as in the” the specific embodiment of the specification “which
is the only possible source of support for the manipulative steps claimed,” and thus the “specification
also fails to enable the formation of a magnetic brush” (answer, pages 10-12; emphasis supplied).
Appellant, in his reply brief, reviews several United States Patents and finds that none disclose
“examples in any different manner from” the specific embodiment in the specification (pages 1-4).
Appellant further cites United States Patent No. 4,911,100 for the description of “several different
‘magnetic brush’ patents” in support of the proposition that “it is well within the skill of the ordinary
artisan to . . . form a magnetic brush” and thus the “specification, in combination with conventional
knowledge, is therefore enabling of the claimed invention” (id., pages 5-6).
Both the examiner and appellant base their case on their respective views of the description that
one skilled in this art would find in the specific embodiment of the specification vis-à-vis the method of
the appealed claims. While we agree with appellant that, based on the evidence in ¶ 3 of appellant’s
declaration and the cited patent literature, one skilled in this art would necessarily find a description
equivalent to a “magnetic brush” in said embodiment, we cannot agree with appellant that the evidence
submitted shows that this person would reasonably recognize in the same disclosure a description of the
claimed methods as defined by the claims which establishes that appellant was in possession of said
methods, including each of the limitations stated therein , as of the effective filing date of this
application. Indeed, appellant has testified in ¶ 4 of his declaration that it would have been apparent,
that is, obvious, to one skilled in the art from the specified embodiment that the method of claim 7 is
merely among the contact-type developing methods utilizing a magnetic brush that appellant
envisioned, which testimony, even if coupled with the alleged predictability with respect to the
enablement that one skilled in the art would find in the specific embodiment, does not establish that this
disclosure reasonably provides the requisite written description within the meaning of the statute. See
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