Appeal No. 1998-3271
Application No. 08/563,156
persons skilled in the art that, as of the filing date thereof,
the inventor had possession of the subject matter later claimed
by him.” In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465,
467 (CCPA 1978). If “the specification contains a description of
the claimed invention, albeit not in ipsis verbis (in the
identical words), then the examiner or Board, in order to meet
the burden of proof [of lack of adequate written description],
must provide reasons why one of ordinary skill in the art would
not consider the description sufficient.” In re Alton, 76 F.3d
1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996).
The appellants’ specification describes the coating
apparatus in terms of a back block (20) and a doctor block (21),
each having a base portion and a tip portion, and illustrates
this apparatus (figures 1-8). The specification differs from the
present claims by using the terms “back block” and “doctor block”
instead of “feed block”. The examiner has not provided the
required reasoning in support of the argument that the disclosure
of “back block” and “doctor block” would not have reasonably
conveyed to one of ordinary skill in the art that the appellants
had possession of a coating apparatus having a feed block as
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