Appeal No. 1999-0810
Application No. 08/463,883
As for the written description issue raised by the
examiner, the test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter rather than the presence or
absence of literal support in the specification for the claim
language. In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983). Moreover, the burden of showing that a
claimed invention is not described in an application rests on
the PTO in the first instance, and the PTO must give reasons
why a description not in ipsis verbis is insufficient. In re
Edwards, 568 F.2d 1349, 1354, 196 USPQ 465, 469 (CCPA 1978).
Again, we view the examiner as having failed to carry his
burden of proof with respect to the written description issue
before us on this appeal. This is because the examiner’s
basic position, in essence, is limited to an assertion that
the appellant’s original disclosure does not literally
describe “non-LaMnO family” ceramics which are embraced by
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the appealed claim. For example, on page 4 of the answer the
examiner urges that,
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