Appeal No. 2001-1231
Application No. 08/976,371
question is completely outside the scope of any embodiments in
the original disclosure. See In re Alton, 76 F.3d 1168, 1175, 37
USPQ2d 1578, 1583 (Fed. Cir. 1996). Then the burden of proof is
shifted to appellants to show, by evidence, reasoning, or
argument, that the original disclosure reasonably conveyed to one
of ordinary skill in the art that appellants were in possession
of the subject matter in question. See Alton, supra.
The examiner finds that claim 14, part e, recites that the
average aggregate branches are “less than about 11.5.” (Answer,
page 2). The examiner finds no support for this range anywhere
in the original disclosure, merely finding a single data point of
11.2 (id., citing page 19 of the specification). Therefore we
determine that the examiner has met the initial burden of proof.
See Alton, supra.
Appellants submit that the preliminary amendment adding the
subject matter in question incorrectly stated the support for the
amendment was on page 20 of the specification, but argue that the
proper support is found on page 19 of the specification (Brief,
page 5). However, appellants do not cite any specific lines of
page 19 nor refer to any specific average aggregate branch values
5
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