Appeal No. 2007-3827
Application 08/713,905
the disclosure a written description of the invention defined by claim 1
sufficient to establish a prima facie case, shifting the burden to Appellants to
establish otherwise. Accordingly, we again evaluate all of the evidence in
the written description in the Specification as a whole, giving due
consideration to the weight of Appellants’ arguments in the Brief and Reply
Brief. See, e.g., In re Alton, 76 F.3d 1168, 1172, 1175-76,
37 USPQ2d 1578, 1581, 1583-84 (Fed. Cir. 1996); In re Wertheim,
541 F.2d 257, 262-65, 191 USPQ 90, 96-98 (CCPA 1976).
The entire written description in the Specification must be considered
in determining whether the disclosure does in fact “convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, [Appellants
were] in possession of the invention . . . now claimed.”
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991); see also, e.g., In re Wilder, 736 F.2d 1516, 1520-521,
222 USPQ 369, 372-73 (Fed. Cir. 1984). The determination of whether
Appellants were in possession of the later claimed invention, product or
process, is based on the analysis of the facts of record in each case, and is
not determined by any holding with respect to a certain number of species or
other such considerations in other product and process cases. See, e.g.,
Vas-Cath, 935 F.2d at 1561-562, 19 USPQ2d at 1116; Wertheim, 541 F.2d
at 262-65, 191 USPQ at 96-98, and cases cited therein.2 Appellants can
amend the originally claimed invention to avoid prior art or for other
2 Broadly articulated rules are particularly inappropriate in this
area. Mere comparison of ranges is not enough, nor are
mechanical rules a substitute for analysis of each case on its
facts to determine whether an application conveys to those
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