Appeal No. 2000-2076 Page 3
Application No. 08/481,131
(4) applicants’ Appeal Brief (Paper No. 29);
(5) the Examiner’s Answer (Paper No. 30); and
(6) applicants’ Reply Brief (Paper No. 31).
On consideration of the record, including the above-listed materials, we reverse the
examiner’s rejection under 35 U.S.C. § 112, first paragraph.
DISCUSSION
The PTO has the initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in applicant’s disclosure a description of the
invention defined by the claims. In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97
(CCPA 1976). In an effort to discharge that burden here, the examiner focuses on the
language “a gaseous contrast agent” in claim 11.2 According to the examiner, the
specification as filed does not describe spherical particles comprising a matrix of a
biocompatible, biodegradable, non-immunogenic polymer enclosing a gaseous contrast
agent which reflects sound waves. Therefore, the examiner argues, applicants’ claims
do not enjoy adequate, written descriptive support in the specification, as filed, and they
run afoul of the written description requirement in 35 U.S.C. 112, first paragraph. We
disagree.
The language “a gaseous contrast agent” is not found verbatim in the original
disclosure. However, in order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support for the
2 Independent claim 11 was amended in its current form in Paper No. 8, received July 3, 1996.
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