Appeal No. 97-4208
Application 08/682,393
piece, the examiner seems to state on page 3 of the answer that
the rejection is for lack of written description, i.e.:
Claims 1-5, 9-13, 15, 17-25 and 27-44
stand finally rejected under 35 U.S.C. 112,
first paragraph, as containing subject matter
which was not described in the specification
in such a way as to reasonably convey to one
skilled in the art that the inventor(s), at
the time the application was filed, had
possession of the claimed invention.
However, he then repeats the above-quoted language from the final
rejection, and on pages 9 and 10 of the answer argues that the
disclosure is not enabling because appellant’s disclosed ejection
mechanism 118 would be rendered inoperative if the socket were
integral with driver member 20.
Since the examiner has referred to both written
description and enablement, we note initially that these are
separate and distinct requirements of the first paragraph of
§ 112. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). In the present case, regardless of
the precise interpretation which may be placed on the recitation
in claim 1 that the annular driver member is “operative to
matably engage the first workpiece,” there is a written descrip-
tion of this recitation in the application as filed, not only
4
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