Appeal No. 1998-1386 Page 10
Application No. 08/269,156
claimed.’" Gentry Gallery, Inc. v. Berkline Corp.,
134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998)
(quoting In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614,
1618 (Fed. Cir. 1989)). Fulfillment of the requirement is
adjudged “as of the filing date” of the associated patent
application. Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1566, 19
USPQ2d at 1119. “‘[T]he PTO has the initial burden of
presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims.’" Gosteli, 872 F.2d at 1012,
10 USPQ2d at 1618 (quoting In re Wertheim, 541 F.2d 257, 263,
191 USPQ 90, 97 (CCPA 1976)).
Here, the examiner fails to show that the original
specification, which includes the original claims, does not
describe “a second search technique performed subsequent to a
first search techniques wherein both search techniques
consider information pertaining to both character shapes and
literal context of the characters.” (Supplemental Examiner’s
Answer at 4.) To the contrary, the specification discloses
two search techniques: “one of the two search techniques,
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