Appeal No. 1995-1703
Application 07/897,304
(main answer, page 8).
The examiner’s explanation is unclear as to whether the
rejection is based on an alleged failure to comply with the
written description requirement or the enablement requirement
of 35 U.S.C. § 112, first paragraph, or both. The written
description and enablement requirements are, of course,
separate and distinct. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). For the
sake of completeness, we shall evaluate the rejection in light
of both requirements.
Before doing so, however, we find it necessary to make
two observations about the claim language in question. First,
the examiner’s interpretation that the claims (via independent
claims 1, 15 and 21) require a thermoplastic having an
elongation value of at least 150% at temperatures below about
-20EC is not well taken. The claim limitations in question,
read on their face or in light of the underlying disclosure,
simply do not support such an interpretation. For example,
page 7 in the specification discusses the elongation value
without any mention of temperature. Second, it is evident
7
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