Appeal 2007-3797
Application 10/453,061
The Examiner has found that the amended claim language embraces
business forms that are not described pursuant to § 112, first paragraph, in
the Specification, as filed. The Examiner has found that the Specification
does not furnish explicit written descriptive support for the added limitation
“no heat activated image producing chemical coating thereon” in claim 1
(Answer 3 and 4). Moreover, the Examiner has found that the Specification,
as filed, does not implicitly or inherently furnish written descriptive support
for the added claim limitation by the disclosure of a laser printable stock or
sheet of paper (Answer 4). The Examiner has determined that the added
limitation in question is a negative limitation that changes the scope of the
claimed invention (the limitation results in claims with a narrower scope by
the exclusionary requirement) in a way that has no basis for written
descriptive support, within the meaning of the first paragraph of 35 U.S.C. §
112, in the Specification, as filed (Answer 4 and 5). As the Examiner’s
factual findings are supported by substantial evidence, we determine that the
Examiner has established a prima facie case of a lack of written descriptive
support for the rejected claims.
Appellants contend that the Specification expressly establishes that
Applicants were in possession of the claimed subject matter requiring the
absence of a heat activated image producing chemical coating on a paper
recited as part of the business form throughout the Specification. Appellants
cite Specification paragraphs 0002, 0005, 0010, 00012 and originally filed
claims 22 and 26 as being exemplary of the explicit support found in the
Specification, as filed (Br. 7). Appellants further refer to a Declaration
under 37 CFR § 1.132 by Ken Whitcomb, a named co-inventor, and argue
several differences between laser technology and papers useful for laser
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