Appeal No. 1997-3487 Page 5
Application No. 08/473,420
USPQ at 97. Furthermore, the initial burden is on the examiner to present evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description of the invention defined by
the claims. Id. It is sometimes possible for the examiner to meet that burden by simply pointing out that
the claim reads on embodiments outside the scope of the original description. See Wertheim, 541 2
F.2d at 263-64, 191 USPQ at 97 (“By pointing to the fact that claim 1 reads on embodiments outside
the scope of the description, the PTO has satisfied its burden.”). However, in the present case, the
original disclosure contains a broader disclosure which fully encompasses the claimed range. In such a
situation, the examiner must present sufficient reasons to doubt that the broader described range also
describes the narrower claimed range. Wertheim, 541 F.2d at 264, 191 USPQ at 98. The examiner
has presented no such reasoning. Therefore, no prima facie case of unpatentability has been
established on the basis of a lack of written description.
2It is, however, not always the case that there will be a lack of written description in a case in
which “about” is added to the recitation of a range. See, for instance, Eiselstein v. Frank, 52 F.2d
1035, 34 USPQ2d 1467 (Fed. Cir. 1995) in which the tenor of the original disclosure indicated
approximation for various element percentages for an alloy composition and thus adding “about” to a
range disclosed in the specification as 45-55% was held to be supported by the original disclosure.
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