Appeal 2006-2197
Application 10/068,824
that a preference for an anionic polyurethane dispersion also requires that the other
polymers must also be anionic. An ipsis verbis disclosure is not necessary to
satisfy the written description requirement of § 112. Instead, the disclosure need
only reasonably convey to persons skilled in the art that the inventor had
possession of the subject matter in question. See In re Edwards 568 F.2d 1349,
1351-52, 196 USPQ 465, 467 (CCPA 1978). The Examiner, however, has met the
initial burden of proof by establishing that Appellant is claiming embodiments of
the invention that are completely outside the scope of the specification. See In re
Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). Appellant’s
arguments and evidence have not overcome this prima facie case. The Examiner’s
rejection is affirmed.
THE REJECITONS OVER KAWANO
Claims 1, 3, 9, 11, 12, 15, 21, and 22 stand rejected under 35 U.S.C. §
102(b) as anticipated by Kawano.2 The Examiner has found that Kawano discloses
an ink jet recording element that meets the presently claimed invention (Answer 5-
6). Appellant argues that the subject matter of the appealed claims is not
anticipated by Kawano because evidence indicates that the phrase “laminate
adhesion” has a specific meaning which is different from the meaning of the term
“adhesion.” (Br. 8). More specifically, Appellant states on Brief pages 9-10 the
following:
The term “laminate adhesion” and the term “adhesion” have accepted
and different meanings in the art. “Laminate adhesion” refers to the
2 Appellants have not provided separate arguments for the rejected claims. We
select claim 1 as representative of the rejected claims and will limit our discussion
thereto.
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