Appeal No. 96-3923
Application 08/309,790
teachings of Fuller and Rose, (2) affirm the rejection of
claims 8 and 12-14 based on the combined teachings of Fuller
and Rose, (3) reverse the rejection of claims 1-4 based on the
combined teachings of Fuller and Ray and (4) affirm the
rejection of claims 8-11 based on the combined teachings of
Fuller and Ray.
Considering first the rejection of claims 15-28 under 35
U.S.C. § 112, first paragraph, the examiner's rejection
appears to be based on the enablement requirement of that
provision. 3
More specifically, the examiner is of the opinion that the
"whereby" clauses of claims 15 and 16 are
inadequately and insufficiently described
and taught. There is no factual disclosure
to determine when the respiratory tract
sensations created by the irritant are
sufficient to simulate those created by
tobacco smoke to reduce the need of the
user to smoke tobacco, yet insufficient to
3 The description requirement found in the first paragraph of § 112 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. 1064 (1978).
5
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