Appeal No. 1997-3392
Application 08/297,946
. . . it is incumbent upon the Patent Office,
whenever a rejection on this basis is made, to
explain why it doubts the truth or accuracy of any
statement in a supporting disclosure and to back up
assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested
statement. Otherwise, there would be no need for
the applicant to go to the trouble and expense of
supporting his presumptively accurate disclosure.
The examiner argues that 1) the steps in the appellants’
claims do not necessarily make polymers having the recited
morphologies, i.e., the claims do not recite steps, such as
the timing of the starved feed addition, which are required to
make the recited morphologies, and 2) the claims do not recite
any steps which are different than those of Cunningham, who
does not disclose making the appellants’ recited morphologies
(answer, pages 6-7 and 12-16).
As discussed above, the claims must define the scope of
protection of the invention, but need not provide a technical
description of the claimed invention. Such a description is
to be provided in the specification. The appellants’
specification describes how the desired polymer morphology is
obtained (pages 8-11). The examiner has not provided evidence
which shows that this description is incorrect or inaccurate.
Consequently, the examiner has not carried the burden of
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