Appeal No. 1998-1736
Application 08/282,847
sufficient. Once the examiner has carried the burden of
making out a prima facie case of unpatentability, the burden
of coming forward with evidence or argument shifts to the
applicant to show that the invention as claimed is adequately
described to one skilled in the art. In re Alton, 76 F.3d
1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996). If a
person of ordinary skill in the art would have understood the
inventor to have been in possession of the claimed invention
at the time of filing, even if every nuance of the claims is
not explicitly described in the specification, then the
adequate written description requirement is met. Id., 76 F.3d
at 1175, 37 USPQ2d at 1584.
In this case we do not consider the reasons given by the
examiner sufficient to make out a prima facie case of
noncompliance with the “written description” requirement, but
even assuming that a prima facie case were established, it has
been overcome by appellants. As appellants assert on pages 5
and 6 of their brief, referring to a text submitted by them3
3 All references herein to appellants’ brief are to the
brief filed on August 4, 1997 (Paper No. 15).
6
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