Appeal No. 96-0877
Application 08/123,639
on a specification which does not satisfy both the description
and enablement requirements in the first paragraph of § 112.
However, because these requirement are separate and distinct
and involve different tests, they cannot be considered as a
common or single rejection as the examiner has done here. See
In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed.
Cir. 1984). We shall therefore treat this rejection as two
separate grounds of rejection of the appealed claims, one
under the description requirement in the first paragraph of §
112, and the other under the enablement requirement in the
first paragraph of § 112.
With apparent regard to the description requirement, the
examiner takes the position that ?[t]he specification does not
provide support for ‘an implantable prosthetic heart having at
least one leaflet and valve as claim 1 now states? (final
office action, Paper No. 4, page 2). Appellant does not take
issue with the examiner’s position and instead states on page
7 of the main brief that the present wording of claim 1
contains an error which occurred in rewriting the claim in
amended form in amendment A (Paper No. 3).
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