Appeal No. 97-0082
Application No. 07/993,718
provisions of 37 CFR § 1.196(b), we will enter a new rejection of
claims 6, 7 and 23 under 35 U.S.C. § 103.
Considering first the rejection of claim 23 under 35 U.S.C.
§ 112, first paragraph, it is the examiner’s position that:
the disclosure is not enabling for the recitation found
in the last three lines of claim 23. Appellants have
failed to set forth the specific support for this new
language, and such is not readily apparent to the
Examiner. [Answer, page 5; citation omitted.]
In support of this position the answer states that:
The Appellants’ refusal to specifically point out
support in the written disclosure and specific
reference numerals in the drawings to give credence to
the arguments to the new matter rejection, lead[s] the 5
examiner to believe that they are incapable of doing
so, i.e.[,] that no such support exists. [Page 10;
footnote added.]
We observe that the description requirement found in the
first paragraph of § 1l2 is separate from the enablement
requirement of that provision. See Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1560-64, 19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991)
and In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA
1977), cert. denied, sub. nom, Barker v. Parker, 434 U.S. 1238
5The proper basis for a new matter rejection is under
§ 112, first paragraph, and the analysis is whether the original
disclosure provides descriptive support for the invention now
being claimed. See In re Rasmussen, 650 F.2d 1212, 1214, 211
USPQ 323, 326 (CCPA 1981).
5
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