Appeal No. 2003-1926 Page 10
Application No. 09/095,842
more than 320.1 nm’ and that [the] particle size is outside the limits of the claimed invention.”
The reasoning with respect to claims 15-17 is similar to that used to reject claims 12-14.
The Examiner has the initial burden of presenting evidence of reasons why persons
skilled in the art would not recognize in the disclosure a description of the invention defined by
the claims. In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976).
With regard to claims 6-11, we note that both original claim 1 and the specification at
page 4, lines 7-12 convey the concept that the invention is directed to a VdF dispersion having a
200 nm or less particle size, a 30-50 wt. % solids content, and not more than 1 wt. % fluorine-
containing surfactant. That is enough for written descriptive support. Hyatt v. Boone, 146 F.3d
1348, 1352, 47 USPQ2d 1128, 1130 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1032 (1999); In re
Anderson, 471 F.2d 1237, 1244, 176 USPQ 331, 336 (CCPA 1973). The portions of the
specification cited by the Examiner do not negate what is disclosed in original claim 1 or what is
disclosed on page 4, lines 7-12 of the specification.
With respect to claims 12-17, these claims, as pointed out by Appellants (Brief, pp. 24-
28), are supported by Comparative Examples 4 and 5 respectively. We understand the
Examiner’s reluctance to find supporting disclosure for these claims as they are not referred to in
the specification as part of Appellants’ invention. However, as stated in In re Kaslow:
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that time of
the later claimed subject matter, rather than the presence or absence of literal sup-
port in the specification for the claim language.
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007