Appeal No. 1999-0936 Application No. 08/890,263 ordinary skill in the art would not consider the description 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. In 5Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007