Appeal No. 1997-1538
Application 08/184,172
inclusion of all other elements not so expressly excluded. This clearly illustrates
that such negative limitations do, in fact, introduce new concepts.
Grasselli, 231 USPQ at 394.
Applicants rely on In re Johnson, 558 F.2d 1008, 194 USPQ 187 (CCPA 1977), apparently
for the proposition that a subgenus generated by the removal of specifically disclosed species from the
broader genus is not a violation of the written description requirement.
Applicants and the examiner each apparently argue for the application of a per se rule which
results in either a reversal or affirmance of the rejection depending on whose per se rule we apply.
However, no such per se rules exist. Whether the description requirement has been satisfied depends
of the particular facts of each case. The specification as a whole must be analyzed to determine
whether the written description allows a person of ordinary skill in the art to recognize that applicants
invented the claimed subject matter. Vas-Cath, 935 F.2d at 1563-64, 19 USPQ2d at 1116. In order
to meet the burden of establishing the prima facie case, the examiner must explain why one having
ordinary skill in the art would not recognize that the applicants invented the subject matter they now
claim. The examiner has not provided the necessary explanation. Merely pointing to the fact that the
specification did not expressly state the negative limitation does not meet this burden. "It is not
necessary that the claimed subject matter be described identically [in the written description] . . . ." In re
Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984); In re Lukach, 442 F.2d 967,
968-69, 169 USPQ 795, 796 (CCPA 1971) (The written description requirement does not require in
haec verba antecedence in the originally filed application).
The examiner has failed to show, prima facie, that the written description requirement has not
been met for the subject matter of claim 13. Accordingly, we reverse the rejection of claims 13 and
16-22.
The rejection under 35 U.S.C. § 103(a)
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