Appeall No. 1998-1398 Page 8
Application No. 08/400,637
date” of the associated patent application. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d at 1566, 19 USPQ2d at 1119. “‘[T]he PTO
has the initial burden of presenting evidence or reasons why
persons skilled in the art would not recognize in the
disclosure a description of the invention defined by the
claims.’" Gosteli, 872 F.2d at 1012, 10 USPQ2d at 1618
(quoting In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97
(CCPA 1976)). With these principles in mind, we consider the
examiner’s two bases for the rejection.
First, the examiner alleges, “[n]o where [sic] in the
specification does it state that the step of generating a
three way call and the steps of automatically terminating a
path of the three way call is [sic] automatic.” (Examiner’s
Answer at 21.) The appellants argue, “[s]upport in the
specification is found, for example, on page 14, line 23 -
page 18, line 2.” (Appeal Br. at 8.)
Claims 27-30 specify in pertinent part the following
limitations: “automatically generating a three way call ....”
Claims 28 and 30 further specify in pertinent part the
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