Appeal No. 1999-1113
Application No. 08/888,354
It appears that the examiner is attempting to find and match the exact words of the
claims with words or phrases within the original disclosure. However, if the
specification contains a description of the claimed invention, albeit not in ipsis verbis (in
the identical words), then the examiner, in order to meet the burden of proof, must provide
reasons why one of ordinary skill in the art would not consider the description sufficient. In
re Alton, 76 F.3d 1168, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). It is enough that the
original disclosure makes clear that the applicants had possession of the invention now
claimed at the time the application was originally filed. We hold that it is clear, in the
instant case, that appellants did, indeed, have such possession.
Moreover, while appellants painstakingly went through the major elements of the
claim and pointed out specifically the support for each one in the original disclosure, the
examiner has not rebutted appellants’ position at all.
The examiner has provided no reasonable basis for attacking the adequacy of the
written description of the instant disclosure with regard to claim 7. Accordingly, we will not
sustain the rejection of this claim under 35 U.S.C. § 112.
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007