Written Description - Original Claims
There is a strong presumption that an adequate written description of the claimed invention is present when the application is filed. However, a question as to whether
a specification provides an adequate written description may arise in the context of an original claim that is allegedly not described sufficiently in the
specification. In such a case, the Examiner may issue a rejection under the first paragraph of 35 U.S.C. § 112 for a lack of adequate written description. However,
before issuing a rejection, Office personnel should adhere to the procedures laid out under MPEP § 2163 when reviewing patent applications for compliance with the
written description requirement under the first paragraph of 35 U.S.C. § 112. For instance, the Examiner has the initial burden, after a thorough reading and evaluation
of the content of the application, of presenting evidence or reasons why a person skilled in the art would allegedly not recognize that the written description of the
invention provides support for the claims. When the Examiner fails to met his or her burden, the following example may be used as a basis to respond.
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MPEP § 2163(II)(A) states that there is a strong presumption that an adequate written description of the claimed invention is present in the specification as filed.
In other words, a description as filed is presumed to be adequate, unless or until sufficient evidence or reasoning to the contrary has been presented by the Examiner
to rebut this presumption (see MPEP § 2163(III)(A)). Thus, it is the Examiner that must set forth express findings of fact supporting the alleged lack of written
description. These findings should:
(A) Identify the claim limitation at issue; and
(B) Establish a prima facie case by providing reasons why a person skilled in the art at the time the application was filed would not have recognized that the
inventor was in possession of the invention as claimed in view of the disclosure of the application as filed. A general allegation of "unpredictability in the art" is
not a sufficient reason to support a rejection for lack of adequate written description.
In the Office Action, the Examiner provided general allegations that [CLAIMED FEATURE] was not adequately described by the specification. The Examiner, however, has
failed to present any evidence or reasoning to rebut the presumption of adequate written description. This lack of evidence or reasoning clearly establishes that the
Examiner failed to establish a prima facie case by providing reasons why a person skilled in the art at the time the application was filed would allegedly not
have recognized that the inventor was in possession of the invention as claimed in view of the disclosure of the application as filed. Therefore, without the Examiner
providing further evidence, Applicant respectfully submits that the rejection is improper. Further, in the interest of expediting prosecution in this case,
Applicant respectfully submits that [CLAIMED FEATURE] is fully supported by the specification at lease because [FURTHER EVIDENCE and REASONING].
If the Examiner continues to maintain such a rejection, Applicant respectfully requests that the Examiner provide evidence or reasoning that allegedly establishes a
lack of adequate written description. In any case, Applicant respectfully requests that the rejection be withdrawn.