Appeal 2006-2667
Application 10/257,952
the proportion of the other hardening constituents as required by
independent claim 1 as well as by each of the other claims on appeal which
ultimately depend from claim 1 (Br. 4-5).
The § 112 Issue
Has the Examiner presented evidence or reasons why persons skilled
in the art would not recognize in the Specification disclosure a description of
the invention defined by claim 1?
Principal of Law for the § 112 Issue
It is the Examiner's burden to establish a prima facie case of
unpatentability based on the written description requirement, and that burden
is discharged by presenting evidence or reasons why persons skilled in the
art would not recognize in the disclosure a description of the invention
defined by the claims. In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578,
1583 (Fed. Cir. 1996).
Analysis of the § 112 Issue
On the record of this appeal, the Examiner has not presented any such
evidence or reasons. On the other hand, the Appellant has correctly argued
that the claim 11 feature is clearly described in the Specification at a number
of places. For example, see the Specification at the Abstract ("without
reducing the quantity of hardness constituents contained in the liquid
overall"), ¶ 0013 ("without unavoidably increasing the hardness of the
liquid"), ¶ 0022 ("the hardness of the liquid does not increase"), ¶ 0024 ("the
overall hardness in the liquid is left unchanged by the device").
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