Appeal No. 2000-0822
Application 09/037,555
is not a solvent in the context of the specification examples” as it “does not dissolve the partially
polymerized coating in the pores of and on the core particles at the time they are added to water”
(brief, pages 5-6; reply brief, unnumbered page 2). Appellants state that “[i]n fact, the coating
forms a hydrophobic barrier that keeps water from getting into the pores” with the result that
“water is not trapped in the core particles by the process of the specification examples” (brief,
page 6; reply brief, unnumbered page 2). Appellants further submit that “one of the advantages
of the present invention” is “the fact that solvent is not needed in the process described in the
specification,” pointing out that “the specification indicates that one of the problems associated
with solution coating processes is the need to handle excess quantities of solvent” (brief, page 6;
reply brief, unnumbered page 2). We find that the specification, at page 4, line 20, in context,
states that “solution coating techniques are undesirable,” and attempts to provide sufficient
coating materials “necessarily involves handling excessive quantities of solvents, and further
usually these processes result in low yield products.”
We find that the term solvent as used in appellants’ specification and appealed claims
would have its customary, dictionary definition of “[a] substance capable of dissolving another
substance (solute) to form a uniformly dispersed mixture (solution) at the molecular or ionic
level.” The Condensed Chemical Dictionary, page 958 (10th ed., Gessner G. Hawley, ed., New
York: Van Nostrand Reinhold Company. 1981).
It is well settled that the examiner has the burden of making out a prima facie case that
the appealed claims do not comply with this section of the statute by setting forth evidence or
reasons why, as a matter of fact, the written description in appellant’s disclosure would not
reasonably convey to persons skilled in this art that appellants were in possession of the
invention defined by the claims, including all of the limitations thereof, at the time the
application was filed. See generally, In re Alton, 76 F.3d 1168, 1175-76, 37 USPQ2d 1578,
1583-84 (Fed. Cir. 1996), citing In re Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA
1976). As stated by a predecessor Court to our reviewing Court in Wertheim:
[t]he function of the description requirement is to ensure that the inventor had
possession, as of the filing date of the application relied on, of the specific subject
matter later claimed by him; how the specification accomplishes this is not material.
. . . It is not necessary that the application describe the claim limitations exactly, . . .
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