Appeal No. 2006-1759 Παγε 6
Application No. 09/984,184
"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."
Wertheim, 541 F.2d at 263, 191 USPQ at 97. Precisely how close
the original description must come to comply with the § 112
written description requirement must be determined on a case-by-
case basis. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562,
19 USPQ2d 1111, 1116 (Fed. Cir. 1991).
The examiner (answer pages 3 and 4) focuses on the “polymers
chosen from anionic, cationic, amphoteric, and nonionic polymers
of chitin and chitosan quaternized derivatives of cellulose,
xanthum gum derivatives and hyaluronic acid derivatives” in
asserting a lack of descriptive support in the original
application disclosure for claim 44. However, at pages 23-25 of
appellants’ originally filed application specification, the
specification (emphasis supplied) provides, inter alia, that:
Another variant embodiment of the composition according
to the invention is that the at least one film-forming
polymer may be chosen from water-soluble polymers and
is therefore present in the aqueous phase of the
composition in solubilized form. Among the non-limiting
representatives of water-soluble film-forming polymers,
there may be mentioned those chosen, for example, from:
proteins chosen, for example, from proteins of plant
origin, such as wheat proteins, and soya bean proteins,
and proteins of animal origin such as keratin, for
example keratin hydrolysates and sulfonic keratins;
polymers chosen, for example, from anionic, cationic,
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