Appeal 2006-2490
Application 10/238,791
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 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 the term “gel” has
been applied to the reaction mixture of the powder elemental metal, halide
salt, and liquid alkali or alkaline earth metal in the original disclosure
(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 a gel is always formed and that is
sufficient to establish inherency, whether or not the inventors’ [sic]
appreciated that a gel would form when the priority application was filed”
(Br. 6).
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