Appeal No. 2003-1038
Application No. 09/262,628
968, 169 USPQ 795, 796 (CCPA 1971) (“[W]here an applicant
claims, as here, a class of compositions, he must describe that
class in order to meet the description requirement of the
statute.”).
Nothing in the specification leads one of ordinary skill in
the art to conclude that the plastic characteristic of the
fluoropolymers was even a consideration to the appellants at the
time the application was filed. Countless other characteristics
(e.g., a range of polymer melting points based on the seven
enumerated polymers) could have been selected arbitrarily, when
the originally filed specification contains no hint whatsoever
as to that selected characteristic. Absent the requisite
blazemarks7 that would have indicated to one skilled in the
relevant art that the appellants had possession of the claimed
articles limited to those containing “fluoroplastics,” we hold
that the examiner has established a prima facie case of lack of
written description under 35 U.S.C. § 112, first paragraph. In
re Alton, 76 F.3d at 1175-76, 37 USPQ2d at 1583-84 (citing In re
Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976));
see also MPEP 2163.04 (Rev. 1, Feb. 2003) (“A simple statement
such as ‘Applicant has not pointed out where the new (or
7 Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d
1895, 1905 (Fed. Cir. 1996).
7
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