Appeal 2006-2968
Application 10/039,481
By pointing to the fact that a claim reads on embodiments outside the
scope of the description, the Examiner has satisfied the initial burden in
support of the written description rejection. Appellant thus has the burden of
showing why persons skilled in the art would recognize in the disclosure a
description of the invention defined by the claims. Wertheim, 541 F.2d at
257, 263, 191 USPQ 90 at 97. Appellant merely points to portions of the
Specification disclosing pigmented polymer particles having some
conductivity and states that it would be clear to a person of ordinary skill in
the art that the invention is concerned with taking toner particles that are
somewhat chargeable and increasing their chargeability (Br. 6). But this
misses the point. The Examiner’s rejection is based on the fact that the
claims encompass dispersing particles with higher than weak chargeability
and then applying the coating such that the coating provides a chargeability
that is sufficient for imaging yet the same or lower than that of the initially
dispersed particles. Nor has Appellants provided any evidence to support
what those of ordinary skill in the art would have thought the Specification
discloses. Appellant has not met the burden in rebuttal.
While a description of the invention which is narrower than the
subject matter encompassed by the claims will not always result in a failure
to fulfill the written description requirement of 35 U.S.C. § 112, first
paragraph, see In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284
(CCPA 1973), “the case law does ‘not compel the conclusion that a
description of a species always constitutes a description of a genus of which
it is a part’” either. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473,
1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998)(quoting Regents of the Univ.
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