Appeal No. 95-0142
Application 07/817,961
The § 112 Rejection
The examiner has been less than a model of clarity as to
whether his § 112, first paragraph, rejection is based upon
noncompliance with the enablement requirement versus the written
description requirement of this paragraph. To the extent that it
is based upon nonenablement, the § 112 rejection plainly cannot
be sustained since the examiner has failed to advance any
reasoning whatsoever inconsistent with enablement pursuant to his
burden of proof. In re Strahilevitz, 668 F.2d 1229, 1232,
212 USPQ 561, 563 (CCPA 1982).
As for the written description requirement, the test for
compliance therewith is whether the disclosure of the application
as originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject
matter, rather than the presence or absence of literal support in
the specification for the claim language. In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). On page 4
through page 10, line 13, of their principal brief, the
appellants have set forth detailed reasons associated with
specifically identified portions of their specification
disclosure in support of their belief that the originally filed
disclosure of this application would reasonably convey to an
artisan that they had possession as of the filing date of the now
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Last modified: November 3, 2007