Appeal No. 1999-1907
Application No. 08/690,409
to whether the rejection is based on lack of written description
or on lack of enablement, it is our judgment that the examiner
has not met the threshold burden of proof for either basis.
In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996); In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561,
563 (CCPA 1982).
We first address lack of written description under the
first paragraph of 35 U.S.C. § 112. In order for applicants to
satisfy the written description requirement of 35 U.S.C. § 112,
first paragraph, the disclosure of the application as originally
filed must reasonably convey to those skilled in the relevant
art that the applicants, as of the filing date of the original
application, had possession of the claimed invention. Alton, 76
F.3d at 1172, 37 USPQ2d at 1581; In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
In the present case, the examiner has failed to present any
"'evidence or reasons why persons skilled in the art would not
recognize in the disclosure a description of the invention
defined by the claims.'" Alton, 76 F.3d 1168, 1175, 37 USPQ2d
1578, 1583 (quoting from In re Wertheim, 541 F.2d 257, 263, 191
USPQ 90, 97 (CCPA 1976)). That the "disclosure fails to teach
one of ordinary skill in the art the composition of addition
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