Appeal No. 2004-2138 Page 5
Application No. 08/765,324
produced by the method; and (e) generic means of removal of all self-
aggregated and degraded material.
Examiner’s Answer, page 6. The examiner further explained these points on pages 6-
11 of the Answer.
Appellants argue that the specification’s description satisfies 35 U.S.C. § 112,
first paragraph:
The application has a long discussion of all of the various known
apolipoproteins and which lipoproteins they form. The application
describes how to specifically delipidated [sic], reduce, carboxylate [sic,
carboxymethylate], and isolate antigen, as well as how to immunize
animals, obtain polyclonal antibodies, and screen for the desired
specificity. The application demonstrates how to make monoclonal
antibodies, and recombinant antibodies with the same specificity. Nothing
more is required.
Appeal Brief, page 8.
The examiner “‘bears the initial burden . . . of presenting a prima facie case of
unpatentability.’ In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). Insofar as the written description requirement is concerned, that burden is
discharged by ‘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.’ . . . If . .
. the specification contains a description of the claimed invention, albeit not in ipsis
verbis (in the identical words), then the examiner . . ., in order to meet the burden of
proof, must provide reasons why one of ordinary skill in the art would not consider the
description sufficient.” In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed.
Cir. 1996).
“In order to satisfy the written description requirement, the disclosure as originally
filed does not have to provide in haec verba support for the claimed subject matter at
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