Appeal No. 2003-1513
Application No. 09/326,412
On page 4, lines 10 and 19 of the Applicant’s
specification, the tissue expander is described as
having a “thicker portion,” but it does not state what
thicker encompasses. Claims in a pending application
are to be given their broadest reasonable
interpretation. In re Hyatt, 54 USPQ2d 1664 (Fed.
Cir. 2000). Therefore, it is not clear if one
material is made thicker at the posterior or are the
claims to be interpreted as the applicant discloses
(Fig. 1) with two different materials in the present
application.
The appellant, on the other hand, argues that the base may
be either thicker or reinforced and that claim 22 “is limited to
the situation in which the posterior portion (base) is thicker
than the anterior portion.” (Supplemental appeal brief, page
4.)
In the answer, the examiner presents an additional argument
as follows: “Claim 22 recites ‘preventing means comprises a
posterior portion which is thicker than the anterior portion,’
but fails to mention where the support is for this limitation.”
(Answer, pages 4-5.)
We cannot agree with the examiner on this issue.
As an initial matter, it is important to emphasize that the
examiner bears the initial burden of presenting a prima facie
case of unpatentability, whether it be based on prior art or on
any other ground. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). “Insofar as the written
description requirement is concerned, that burden is discharged
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