Appeal No. 2005-0287 Page 4
Application No. 09/216,214
Accordingly, we will not sustain the examiner’s § 112, first
paragraph rejection on this record. However, our disposition of
the examiner’s obviousness rejection is another matter. In this
regard, appellant has not persuaded us of any reversible error in
the § 103(a) rejection before us. Thus, we shall affirm the
examiner’s § 103(a) rejection. Our reasoning follows.
The Rejection for Lack of Descriptive Support
Insofar as the written description requirement is concerned,
“the 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.”
In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976).
"Precisely how close the original description must come to comply
with the description requirement of § 112 must be determined on a
case-by-case basis." Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555,
1562, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991). With regard to
written descriptive support, all that is required is that
appellant’s specification reasonably conveys to one of ordinary
skill in the art that as of the filing date of the application,
appellant was in possession of the presently-claimed invention;
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