When arguing 112 issues, such as written description issues, often there are questions of what would be understood by a person skilled in the art in view of the specification. These issues are often hard to predict when drafting the specification and often come about with amendments. As such, applicants need to be careful when heading to appeal on issues that are questionable from the language of the specification alone. In particular, including additional evidence before appeal is generally a prudent strategy, whether by declaration, additional references, etc. What is generally a difficult way to win is to simply argue that the examiner is not qualified to understand the specification, or rely on mere attorney argument that a certain feature would be “understood” by a person skilled in the art.

An example of what happens when taking the later approach is appeal 2019-001930, application 13/945,793. Here, the applicant appealed various 112 rejections and tried to argue as follows:

The PTAB was generally not receptive to this approach.

Further, the PTAB found the unsupported attorney argument was also unpersuasive. From the decision:

Appellant’s attempt to fill gaps in the written description disclosure of an invention by offering unsupported and unspecific assertions as to what a skilled artisan might gather from an alleged “inherent” disclosure is unpersuasive. Appeal Br. 6. The issue before us is not enablement, it is possession of the invention. See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1346–1348 (Fed. Cir. 2010) (explaining that the written description requirement is separate from enablement). Whether or not a skilled artisan could make and use the claimed invention, Appellant does not convincingly explain how a person of ordinary skill in the art would understand that Appellant possesses the invention from an unspecified, alleged “inherent” disclosure. We agree with the Examiner that there is insufficient written description support for the [claim limitations at issue].

So, rather than attacking the Examiner’s level of expertise, consider providing evidence, or modifying the claim language to better track the disclosure in the specification.