Appeal No. 2004-1144
Application No. 09/584,765
On the record before us, the examiner has established a
prima facie case for his claim 33 interpretation and
correspondingly for the section 112, second paragraph, rejection
based thereon. In contrast, the appellant has offered no
rationale at all in support of his conclusory statement that
claim 33 does not require nickel or aluminum. Under these
circumstances, it is our determination that the examiner has made
a prima facie case of unpatentability which the appellant has
failed to successfully rebut with argument or evidence of
patentability. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Therefore, we hereby sustain the examiner’s section 112,
second paragraph, rejection of claims 41, 44 and 47.
Concerning the section 112, first paragraph, rejection, the
test for determining compliance with the written description
requirement is whether the original disclosure conveys with
reasonable clarity to those skilled in the art that the
applicant, as of the filing date sought, was in possession of the
invention defined by the rejected claims. See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1116-17 (Fed.
Cir. 1991). With specific regard to the negative claim
limitations criticized by the examiner, the issue is whether
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