Appeal 2006-2419
Application 10/238,297
are completely outside the scope of the specification, then the examiner or
Board need only establish this fact to make out a prima facie case. [Citation
omitted].” In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed.
Cir. 1996).
The Examiner has found, and Appellants do not dispute, that the
original disclosure does not recite the term “gel” or that this term “gel” has
been applied to describe the reaction mixture of the powder elemental metal,
halide salt, and liquid alkali or alkaline earth metal (Answer 3). Therefore
we determine that the Examiner has met the initial burden and has
established a prima facie case of lack of written description. See Alton,
supra. Once the Examiner carries the burden of making out a prima facie
case, the burden of coming forward with evidence or argument shifts to
Appellants. See Alton, supra, citing Oetiker, 977 F.2d at 1445, 24 USPQ2d
at 1444.
Accordingly, we now consider Appellants’ arguments and evidence.
Appellants cite numerous case law for the holding that “a process for
making a material discloses the material and any inherent property of the
material irrespective of whether the language describing that inherent
property is in the application or not” (Br. 4). Therefore Appellants rely on
the Jacobsen Declaration to show “that for many conditions, a gel always
occurs, not may occur” (Br. 6).
We do not find the Jacobsen Declaration convincing. As correctly
stated by the Examiner (Answer 4-6), the data presented in the Declaration is
not commensurate in scope with the claims sought to be patented.
Specifically, the Declarant states that “in over 200 runs of titanium
tetrachloride and liquid sodium and in some cases, titanium tetrachloride
4
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