Appeal No. 2004-2355
Application No. 09/935,721 Page 7
composition is not limited to that disclosed in the
specification” (answer, page 5).
Insofar as the written description requirement is concerned,
the examiner has the initial burden of 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.
See In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed.
Cir. 1996). The examiner’s finding of lack of descriptive
support for the appealed claims is without merit. This is so
because the original claims provide literal support for
themselves See In re Anderson, 471 F.2d 1237, 1238-39, 176 USPQ
331, 332 (CCPA 1973)(unamended original claim is a part of the
original disclosure). The examiner has not persuasively
explained how appellant's presentation of a detailed description
of the invention wherein specific amounts of particular magnetic
dispersion medium ingredients are furnished establishes a lack of
descriptive support under 35 U.S.C. § 112, first paragraph for
those broader appealed claims that are supported by the
originally presented claims.
“[T]he PTO has the initial burden of 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.”
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