Appeal No. 2006-0545 Page 5
Application No. 10/019,273
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351- 2,
196 USPQ 465, 467 (CCPA 1978).
“[T]he 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).
The Examiner (Answer, pages 2-3) urges that the specification does not provide
adequate description of a composition maintaining catalytic activity for 25 hours or more
(Claims 17-19). In particular, the Examiner asserts the word “more” provides an infinite
time period which was not clearly disclosed in the instant specification.
The Examiner's position is not persuasive. As correctly noted by Appellants, the
original disclosure in Figure 1 describing catalytic activity present at least until 140 hours
of tos (time on stream) adequately describes the claimed subject matter. The
determination of catalytic activity for 25 hours or more without the restraint of a specific
numerical upper time limit is clearly conveyed by original disclosure. While it is
recognized that no upper limit for the determination of catalytic activity is recited in the
rejected claim, the determination of catalytic activity without the restraint of an upper
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