Appeal No. 2001-1045 Page 3
Application No. 09/178,594
Each of the issues concerns the written descriptive support for or definiteness of
a different claim limitation, each must be separately considered in light of the
record, and each is potentially an independent basis for holding the claims
unpatentable. Thus, it might have been clearer to present each “issue” as a
separate ground of rejection, under the appropriate paragraph of § 112, applied
to the appropriate claims. However, the examiner has made clear his bases for
holding the claims unpatentable, and has made clear which basis applies to
which claims. We therefore proceed to the issues set out in the Examiner’s
Answer.
1. Description of the catalyst
The examiner rejected claims 15-18 on the basis that the specification
does not provide an adequate description of the “(b)” catalyst, viz. zinc combined
with a specified copper compound. The examiner acknowledges that the use of
zinc itself as a catalyst is described, as well as zinc combined with cuprous
bromide ethyl sulfide complex, but found that the claim language went “beyond
what the specification actually says.” Examiner’s Answer, page 3.
The examiner bears the initial burden of showing prima facie
unpatentability. See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583
(Fed. Cir. 1996). “Insofar as the written description requirement is concerned,
that burden is discharged by ‘presenting evidence or reasons why persons skilled
in the art would not recognize in the disclosure a description of the invention
defined by the claims.’ . . . If . . . the specification contains a description of the
claimed invention, albeit not in ipsis verbis (in the identical words), then the
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