Appeal No. 2003-1513
Application No. 09/326,412
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.’” In re Alton, 76 F.3d 1168,
1175-76, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996)(citing In re
Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976)).
In this case, the examiner has not met the initial burden of
presenting a prima facie case of unpatentability under 35 U.S.C.
§ 112, first paragraph, written description requirement.
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 applicant, 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). The
applicant, however, does not have to describe exactly the
subject matter claimed. Union Oil Co. of Cal. v. Atlantic
Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232, 1233
(Fed. Cir. 2000).
Contrary to the examiner’s stated position (answer, pages
4-5), a claim does not have to point out where support may be
found in the corresponding written description. Furthermore, as
we discussed above, the present specification reasonably conveys
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