Appeal No. 1997-1538
Application 08/184,172
the court noted that the disclosure must "convey with reasonable clarity to those skilled in the art that,
as of the filing date sought, [the inventor] was in possession of the invention." Vas-Cath, 935 F.2d at
1563-64, 19 USPQ2d at 1117 (emphasis original). The court went on to state that the "invention is,
for the purpose of the 'written description' inquiry, whatever is now claimed." Vas-Cath, 935 F.2d at
1564, 19 USPQ2d at 1117 (emphasis original).
The examiner bears the burden of establishing the prima facie case of unpatentability.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fritch, 972
F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); In re Rhinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147
(CCPA 1976). To meet this burden, the examiner must present a factual basis supporting the
conclusion that a prima facie case exists. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967); In re Lunsford, 357 F.2d 385, 392, 148 USPQ 721, 726 (CCPA 1966); In re Freed,
425 F.2d 785, 788, 165 USPQ 570, 572 (CCPA 1970).
In the examiner’s view the negative limitation that the alcohol “is other than a glycol or
2,6-ditertiarybutylcresol” is a new concept not present in the original disclosure and therefore violates
the description requirement. The examiner relies on a published non-precedential opinion of one of 4
our predecessors, the Board of Appeals, Ex parte Grasselli, 231 USPQ 393 (Board App. 1983). The
board stated:
Despite appellants' arguments to the contrary, we agree with the examiner's
position of record that the negative limitations recited in the present claims,
which did not appear in the specification as filed, introduce new concepts and
violate the description requirement of the first paragraph of 35 U.S.C. 112. In
re Anderson, 471 F.2d 1237, 176 USPQ 331 (CCPA 1973). The examiner's
distinctions between the present case and the prior decisions cited by appellants
are correct and we adopt his position in that regard as our own. It might be
added that the express exclusion of certain elements implies the permissible
44Non-precedential opinions are not binding on subsequent panels of the board.
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