Appeal 2006-2419
Application 10/238,297
application was filed, had possession of the claimed invention (Answer 3).
The Examiner further finds that, for purposes of this rejection, “the time the
application was filed” is considered to be the filing date of related
Application No. 08/283,358, i.e., Aug. 1, 1994 (id.). Appellants do not
dispute this effective filing date as found by the Examiner (see the Brief in
its entirety).
The Examiner finds that the Specification as filed discloses reaction
components such as titanium powder, halide salts, and liquid alkali or
alkaline earth metals (Answer 3). However, the Examiner ultimately finds
that nothing in the original filed Specification would have conveyed the
concept of those components together in gel form, as now claimed, to one of
ordinary skill in the art (id.). The Examiner further finds that this gel form
concept would not have been inherent in the disclosure as originally filed,
and thus claims 21-33 contain “new matter” (Answer 4).
The “written description” requirement of 35 U.S.C. § 112, first
paragraph, requires an applicant to convey with reasonable clarity to those
skilled in the art that, as of the filing date sought, he or she was in possession
of the invention, i.e., whatever is now claimed. See Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
Whether this rejection is for “lack of support,” “new matter,” or “lack of
written description,” the requirement is the same. See Vas-Cath, 935 F.2d at
1560, 19 USPQ2d at 1114. The initial burden of presenting a prima facie
case of unpatentability, on any ground, rests with the Examiner. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
“Thus, the burden placed on the examiner varies, depending upon what the
applicant claims. If the applicant claims embodiments of the invention that
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007