Appeal No. 2006-2061
Application 10/195,703
558 F.2d 1008, 1017-19, 194 USPQ 187, 195-96 (CCPA 1977) (limited generic claim
encompassing polymers to which appellants retreated in view of applied prior art was in fact
supported by the written description in the specification which supported broader generic claim
encompassing polymers “in the absence of the limitation, and that specification, having
described the whole, necessarily described the parts remaining”); cf. In re Wertheim, 541 F.2d
257, 264-65, 191 USPQ 90, 98 (CCPA 1976) (specification supporting broad process parameter
range further in fact described narrower claimed range of that parameter falling within the broad
range in view of disclosure of two embodiments falling within narrower range and absence of
evidence of that narrower range was a different invention than broad range).
We are not convinced otherwise by the examiner’s contention that data reported for the
disclosed alloy species within the presently claimed range in specification Tables 3 and 4
establishes that alloys encompassed by the appealed claims constitute “a different invention”
from the alloys encompassed only by the broader original claims. We find that the written
description in the specification does not support the examiner’s position. Indeed, it is disclosed
that “removing or substantially reducing the presence of sulfur alone” improves the physical
properties of the disclosed alloys (paragraph [11]), which disclosure is coupled with the ranges
in Table 1 (paragraph [09]), and without further describing or otherwise conveying that the
“invention” based on the exemplified alloys is in fact a separate invention. The examiner has not
established that the properties reported for the exemplified alloys would be considered by one
skilled in this art to fall outside this disclosure. In this respect, it is the examiner’s burden to set
forth evidence or reasons why, as a matter of fact, the written description in appellants’
specification 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 in order to establish a prima facie case of non-compliance with the
statutory provision. See generally, In re Alton, 76 F.3d 1168, 1172, 1175-76, 37 USPQ2d 1578,
1581, 1583-84 (Fed. Cir. 1996) (citing Wertheim, 541 F.2d at 262-64, 191 USPQ at 96-97).
The examiner’s decision is reversed.
Reversed
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