Appeal No. 2004-1481
Application No. 09/726,659
examiner need only establish this fact to make out a prima facie
case). Thus the burden of proof has shifted to appellant. Id.
Appellant does not point to any explicit disclosure supporting
the contested negative limitation but argues that “such exclusion
in [sic, is] implicit in the disclosure.” Brief, page 5. As
support for this argument, appellant states that no backing plate
was described in the specification and if the invention used a
backing plate, the specification would have stated so (id.).
Appellant further argues that since Neoh “teaches away” from
appellant’s “no backing plate embodiment,” it is permissible for
appellant to exclude Neoh’s backing plate (Brief, page 6).
Finally, appellant argues that Figure 2 and the specification at
page 3, ll. 15-16, do not show a backing plate and thus provide
support for the negative limitation (id.).
Appellant’s arguments are not persuasive. Merely citing the
lack of description of the negative limitation in question does not
provide support for this limitation, as an infinite number of
elements are not described by appellant’s specification. See Ex
parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1986). Furthermore,
appellant’s argument is not well taken that if the invention used a
backing plate the specification would have so stated since the
specification need not disclose that which is well known in the
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