Appeal No. 2000-0260
Application No. 08/675,865
of 35 U.S.C. § 112. We are also of the view that the Lee reference
does not fully meet the limitations of claims 1, 5, 7, 8, 10, 12,
16, and 17. It is further our opinion that the evidence relied
upon and the level of skill in the particular art would not have
suggested to one of ordinary skill in the art the obviousness of
the invention as set forth in claims 3-4, 6, 9, and 13-15.
Accordingly, we reverse.
We consider first the Examiner’s rejection of claims 1, 3-10,
and 12-17, all of the appealed claims, under the “written
description” requirement of the first paragraph of 35 U.S.C. § 112.
The function of the written description requirement of the first
paragraph of 35 U.S.C. § 112 is to ensure that the inventor has
possession, as of the filing date of the application relied on, of
the specific subject matter later claimed by him. In re Wertheim,
541 F. 2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
In establishing a basis for a rejection under the written
description requirement of the statute, the Examiner has the
initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in an applicant’s disclosure
a description of the invention defined by the claims. Wertheim,
541 F.2d at 265, 191 USPQ at 98. After reviewing the arguments of
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