Appeal No. 1998-0138
Application 08/381,809
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, 1052, 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 order to meet the burden of establishing
the prima facie case of lack of written description, the examiner must explain why one having ordinary
skill in the art would not recognize that the applicant invented the subject matter now claimed. This
requires an analysis of the entire specification as originally filed. As noted above, the limitation, which is
present in all claims, not just claims 5 and 16, was added by amendment. Applicants do not assert that
the limitation is identically present in the specification. Rather, they assert that limitation is implicitly
described in certain portions of the specification. The examiner’s total explanation for the rejection is
stated on page 4 of his answer:
The claims now state that the “palladium compound” does not
contain any hydrosilylation catalytic activity. Applicants’ clearly
do [not] have any basis for such a negative limitation.
Answer, p. 4. This allegation is insufficient to satisfy the examiner’s burden of establishing a prima facie
case of unpatentability for failure to meet the written description requirement. Merely pointing to the
fact that the specification does 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). Where a
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