Appeal No. 1998-3189
Application No. 08/763,352
burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability”). As
correctly pointed out by appellants (Brief, pages 27 and 30-31
and Reply Brief, pages
1-5), the specification as a whole, including the examples
provided therein, reasonably conveys to a person having
ordinary skill in the art that inventors had possession of the
subject matter (negative limitations) in question at the time
the present application was filed. Ex parte Park, 30 USPQ2d
at 1236. However, the examiner has not proffered or pointed
to any factual evidence to the contrary. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1560-64, 19 USPQ2d 1111, 1114-17
(Fed. Cir. 1991)(the written description requirement is a
factual question). Accordingly, we reverse this rejection for
the reasons set forth by appellants in their Brief and Reply
Brief.
We turn next to the examiner’s rejection of claims
21 through 37 under 35 U.S.C. § 103 as unpatentable over
Torrence in view of Mellor and Maddox. The examiner has the
burden of establishing a prima facie case of obviousness under
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007