Appeal No. 1999-0944
Application No. 08/890,252
and "second" does not expressly appear in the original patent
in describing the carriage members 60U, 60L. However, the
claimed subject matter need not be described in haec verba in
the specification in order for the specification to satisfy
the “written description” requirement of § 112, first
paragraph, In re Smith, 481 F.2d 910, 914, 178 USPQ 620, 624
(CCPA 1973), and all new language added by amendment is not
ispo facto new matter. In re Wright, 343 F.2d 761, 767, 145
USPQ 182, 188 (CCPA 1965).
Where, as here, the specification contains a written
description of the claimed invention, but not in ipsis verbis,
the examiner, in making a rejection under the “written
description” requirement of § 112, first paragraph, must meet
the requisite burden of proof by providing reasons why one of
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
5
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