Appeal No. 1997-2688
Application No. 08/453,689
disclosure that appellants invented processes including those
limitations." Wertheim, 541 F.2d at 262, 191 USPQ at 96,
citing In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284
(CCPA 1973). Furthermore, the Federal Circuit points out that
"[i]t is not necessary that the claimed subject matter be
described identically, but the disclosure originally filed
must convey to those skilled in the art that applicant had
invented the subject matter later claimed." In re Wilder, 736
F.2d 1516, 1520, 222 USPQ 369,
372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985),
citing In re Kaslow, 707 F.2d 1366, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983).
In establishing a basis for a rejection under the written
description requirement of the statute, the Examiner has the
initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in an applicants’
disclosure a description of the invention defined by the
claims. Wertheim, 541 F.2d at 265, 191 USPQ at 98. After
reviewing the arguments of record, it is our opinion that the
Examiner has not provided sufficient reasons or evidence to
satisfy such burden.
With respect to representative independent claim 1, the
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