Appeal 2005-2349
Application 09/961,126
burden is the Examiner’s to establish that adhesion does not occur. The
Examiner pointed out that the claim reads on something not described in the
Specification. That is enough to establish a prima facie case of lack of
written description under the current facts. See In re Wertheim, 541 F.2d
257, 263-64, 191 USPQ 90, 97 (CCPA 1976)(“By pointing to the fact that
claim 1 reads on embodiments outside the scope of the description, the PTO
has satisfied its burden.”). Nor has Appellant overcome the prima facie
case. In fact, Appellant states in the Brief that “[t]his additional water is not
used as an adhesive.”
We find that the Examiner has established unpatentability under 35
U.S.C § 112, ¶ 1. Appellant has not convinced us of any reversible error in
the Examiner’s determination that there is lack of written descriptive support
nor has Appellant provided sufficient evidence to overcome the prima facie
case.
Turning to the anticipation of claims 10, 11, 16, and 17 by the Wallick
references, we find that the Examiner has found a description of the
apparatus of claim 10, the representative claim (Answer 5 and 6). As
pointed out by Appellant, the Wallick references have the same basic
disclosure. While we have reviewed both references and find that they
support the position of the Examiner, we will herein refer to Wallick ‘391 to
explain our decision.
There is no dispute that Wallick describes an apparatus including a
corrugating device (rollers 38 and 40), a starch supply device (glue station
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