Appeal No. 2006-0048
Application 09/800,477
the claimed invention, arranged as required by the claims, is described identically in Dodt ‘306,
either expressly or under the principles of inherency, in a manner sufficient to have placed a
person of ordinary skill in the art in possession thereof. See generally, In re Schreiber, 128 F.3d
1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik
GMBH v. American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir.
1984); see also generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir.
1995), and cases cited therein (a reference anticipates the claimed method if the step that is not
disclosed therein “is within the knowledge of the skilled artisan.”); In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw therefrom.”).
Thus, in the absence of a prima facie case of anticipation over Dodt ‘306 within the
meaning of 35 U.S.C. § 102(b), we reverse the ground of rejection of claims 6 and 7.
We now consider the ground of rejection under § 112, first paragraph, written description
requirement. It is well settled that the examiner has the burden of making out a prima facie case
that the appealed claims do not comply with this statutory provision, by setting forth evidence or
reasons why, as a matter of fact, the written description in appellants’ specification in the present
application as it stands of record on appeal would not reasonably convey to persons skilled in
this art that appellants were in possession of the invention defined by claims 1 through 3 and
8 through 21, including all of the limitations thereof, at the time the present application was
filed. See generally, In re Alton, 76 F.3d 1168, 1172, 1175-76, 37 USPQ2d 1578, 1581, 1583-84
(Fed. Cir. 1996), citing In re Wertheim, 541 F.2d 257, 262-64, 191 USPQ 90, 96-97 (CCPA
1976). In this respect, it is well further well settled that an original claim is its own written
description. See, e.g., Wertheim, 541 F.2d at 262, 191 USPQ at 96 (CCPA 1976). In similar
manner, in an objection pursuant to 35 U.S.C. § 132, the burden is on the examiner to set forth
evidence or reasons why, as a matter of fact, an amendment introduces new matter into the
written description of the invention in the application under examination in contravention of this
statutory provision.
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