Appeal 2007-0086
Application 10/845,785
Appellant’s proffered definition of “substantially cured” is inconsistent with
the Specification descriptions discussed above.
Under these circumstances, we determine that neither the
Specification nor any other aspect of the record before us evinces that one
with ordinary skill in this art would reasonably understand what is defined
by the claim 40 phrase “substantially cured.” We hereby sustain, therefore,
the Examiner’s § 112, 2d ¶, rejection of claim 40.
The § 112, 1st ¶, Rejection
The Examiner bears the initial burden of establishing a prima facie
case of unpatentability for lack of written description, and this burden is
discharged by presenting evidence or reasons why persons skilled in the art
would not recognize in the inventor’s 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).
In the Examiner’s opinion, the appealed claims fail to comply with the
written description requirement by virtue of the claim phrase “having a work
time of 3-10 minutes” (Claim 1). The Examiner acknowledges that page 1
of the Specification discloses “a desired worktime ranges from 3 to 10
minutes” (ll. 29-30) but indicates that this disclosure relates to the prior art
and not the Appellant’s invention (Answer 3).
The Appellant argues that the afore-noted Specification, page 1,
disclosure of desired work times relates to commercial processes requiring
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