Appeal No. 2003-1162 Page 14
Application No. 09/468,292
is dissolved, is a concept outside the scope of what is discussed in the specification (Answer, pp.
17-19). The specification fails to discuss any level of liquid relative to solid which would
constitute “substantial dissolving.” In fact, the specification is completely silent with respect to
the presence of solid after the addition of the solvent. The Examiner has met the initial burden of
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 Gosteli, 872 F.2d 1008,
1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Although the original written description does
not have to describe exactly the subject matter claimed, the description must clearly allow
persons of ordinary skill in the art to recognize that Appellant invented what is claimed. Id.
Appellant argues that, although the word “substantially” does not appear in the relevant
portions of the specification, it is clear that a skilled artisan reading the specification would
appreciate that the claimed process could include dissolving a considerable amount of precursor
in the ionic liquid, i.e., an amount Appellant equates with a substantial amount (Amended Brief,
p. 15). “That a person skilled in the art might realize from reading the disclosure that such a step
is possible is not a sufficient indication to that person that the step is part of appellants’
invention.” In re Barker, 559 F.2d 588, 593, 194 USPQ 470, 474 (CCPA 1977), cert. denied,
434 U.S. 1064 (1978)(quoting In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA
1975)).
We conclude that the Examiner has established a prima facie case of lack of written
description which has not been sufficiently rebutted by Appellant.
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