Appeal No. 2002-0652
Application No. 08/465,072
time the patent application was filed." (Emphasis added.)). "One
shows that one is 'in possession' of the invention by describing
the invention, with all of its claimed limitations, not that
which makes it obvious." Lockwood v. American Airlines Inc. ,
107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). The
written description requirement is not satisfied if the disclosure
would lead one to speculate as to "modifications that the inventor
might have envisioned, but failed to disclose." Id.
The U.S. Patent and Trademark Office (USPTO) bears the
initial burden of presenting a prima facie case of
unpatentability. The burden regarding the written description
requirement is described in 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." Wertheim, 541
F.2d at 263, 191 USPQ at 97. Thus, the burden placed
on the examiner varies, depending upon what the
applicant claims. If the applicant claims embodiments
of the invention that are completely outside the scope
of the specification, then the examiner or Board need
only establish this fact to make out a prima facie
case. Id. at 263-64, 191 USPQ at 97. If, on the other
hand, the specification contains a description of the
claimed invention, albeit not in ipsis verbis (in the
identical words), then the examiner or Board, in order
to meet the burden of proof, must provide reasons why
one of ordinary skill in the art would not consider the
description sufficient. Id. at 264, 191 USPQ at 98.
Once the examiner or Board carries the burden of making
out a prima facie case of unpatentability, "the burden
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