Appeal No. 2000-1019
Application No. 08/623,852
37 USPQ2d 1578, 1583 (Fed. Cir. 1996). With regard to the
written description requirement, the burden is met with evidence
or reasons as to why persons skilled in the art would not
recognize in the disclosure a description of the invention
defined by the claims. Id. Once the examiner carries the
initial burden of making out a prima facie case of
unpatentability, the burden shifts to the applicant to overcome
the examiner’s case. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). To overcome a prima facie
case, an applicant must show that the invention as claimed is
adequately described to one skilled in the art. In re Alton,
76 F.3d at 1175, 37 USPQ2d at 1583. After evidence or argument
is submitted by the applicant in response, patentability is
determined on the totality of the record, by a preponderance of
the evidence with due consideration to persuasiveness of
argument. In re Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444.
The examiner rejected claim 1, because the language “‘to
render a metal value insoluble’ and ‘being recovered and render
the one or more additional values insoluble’ are new matter”
(Answer, Paper No. 19, page 3). The examiner states that
in none of these locations [of the specification cited
by the appellants] is there support for the use of the
reducing agent “to render a metal value insoluble” nor
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