Appeal No. 1998-1247
Application No. 08/445,165
In rejecting claims 17 and 20-22 under the first paragraph of 35 U.S.C. § 112, the
Examiner asserts the specification as originally filed, does not provide support for the
invention as is now claimed. In order for a claim to satisfy the written description
requirement, the original application must reasonably convey to those skilled in the
relevant art that the applicants, as of the filing date of the application, had possession of
the claimed invention. In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed.
Cir. 1996); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983)). However, the written description requirement does not require the applicants to
describe exactly the subject matter claimed in the original application. Instead, the
description must clearly allow persons of ordinary skill in the art to recognize that the
applicants invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d
1614, 1618 (Fed. Cir. 1989).
Rather than carry his initial burden of establishing a prima facie case, the
Examiner has inappropriately leaped to the conclusion that specification as originally
filed, does not provide support for the invention as is now claimed. The Examiner, in the
statement of the rejection, did not specifically provide reasons for doubting any
assertions in the specification as to the scope of enablement. Thus, the Examiner
inappropriately has required the Appellants to carry the initial burden of proving that the
claimed subject matter is described. For example, the Examiner asserts “[a]pplicants have
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