Appeal No. 2005-0846
Application No. 09/981,339
appellant cites, inter alia, In re Wertheim, 541 F.2d 257, 191
USPQ 90 (CCPA 1976), and In re Blaser, 556 F.2d 534, 194 USPQ 122
(CCPA 1977). However, as noted in Wertheim, 541 F.2d at 262-3,
191 USPQ at 96-7, determination of questions relating to the
written description requirement depend upon the facts of each
particular case. There are no hard and fast per se rules in this
area. Mere comparison of ranges is not enough.
While it is certainly true that 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 as defined by the claims, here the examiner has
made a finding that appellant’s specification gives no indication
that a stabilizer was ever tested at concentration limits even
close to the claimed lower limit (examiner’s answer: sentence
bridging pages 5-6). Appellant has failed to provide any
rebuttal to the examiner’s finding. In this regard, it is to be
noted that the fact situation here differs from those in Wertheim
and Blaser where, in each case, a specific embodiment or example
was presented in the original disclosure close to the claimed
lower limit of solids content and temperature, respectively.
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