Appeal No. 2006-0465
Application 10/445,707
1444 (Fed. Cir. 1992), citing In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984) (“As discussed in In re Piasecki, the examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of unpatentability.”). In
making out a prima facie case of non-compliance with this statutory provision on the basis that a
claim is indefinite for failing to particularly point out and distinctly claim the subject matter
which appellant regards as the invention, the examiner must establish that when the language of
the claim is considered as a whole as well as in view of the written description in the
specification as it would be interpreted by one of ordinary skill in the art, the claim in fact fails to
set out and circumscribe a particular area with a reasonable degree of precision and particularity.
See Moore, 439 F.2d at 1235, 169 USPQ at 238. In other words, for a claim to comply with this
statutory provision, “those skilled in the art would understand what is claimed when the claim is
read in light of the specification.” See The Beachcombers, Int’l. v. WildeWood Creative Prods.,
31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir. 1994) (quoting Orthokinetics, Inc v.
Safety Travel Chairs Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986)); see
also Exxon Research and Eng’g Co. v. United States, 265 F.3d 1371, 1375, 60 USPQ2d 1272,
1276 (Fed. Cir. 2001); In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994).
It is further well settled that the examiner has the burden of making out a prima facie
case that the appealed claims do not comply with § 112, first paragraph, written description
requirement, by setting forth evidence or reasons why, as a matter of fact, the written description
in appellants’ disclosure would not reasonably convey to persons skilled in this art that
appellants were in possession of the invention defined by the claims, including all of the
limitations thereof, at the time the 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 order to establish a prima facie
case, the examiner need only establish that as a matter of fact, the claim encompasses
“embodiments of the invention that are completely outside the scope of the specification.” See
Alton, 76 F.3d at 1175-76, 37 USPQ2d at 1583.
We agree with appellants’ position and thus, determine that the examiner has not
established a prima facie case under either statutory provision. We are of the opinion that one
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