Appeal No. 2004-0499
Application No. 09/251,789
702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983). Only those
arguments actually made by Appellants have been considered in
this decision. Arguments which Appellants could have made but
chose not to make in the Briefs have not been considered and are
deemed waived (see 37 CFR § 41.37(c)(1)(vii)).
We consider first the Examiner’s rejection of claims
1-29 under the “written description” requirement of the first
paragraph of 35 U.S.C. § 112. The function of the written
description requirement of the first paragraph of 35 U.S.C. § 112
is to ensure that the inventor has possession, as of the filing
date of the application relied on, of the specific subject matter
later claimed by him. In re Wertheim, 541 F.2d 257, 262, 191
USPQ 90, 96 (CCPA 1976).
In establishing a basis for a rejection under the written
description requirement of the statute, the Examiner has the
initial burden of presenting evidence or reasons why persons
skilled in the art would not recognize in an applicants’
disclosure a description of the invention defined by the claims.
Wertheim, 541 F.2d at 265, 191 USPQ at 98. After reviewing the
arguments of record, it is our opinion that the Examiner has
provided sufficient reasons and evidence to satisfy such burden.
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