Ex parte DANIELS et al. - Page 3




              Appeal No. 94-2208                                                                                       
              Application 07/756,346                                                                                   


              statute.  Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111, 1115 (Fed.                    
              Cir. 1991)(“the severability of [the ‘written description’ requirement of the first paragraph of         
               112] from [the] enablement (‘make and use’) provision [of this section of the statute] was             
              recognized by this court’s predecessor, the Court of Customs and Patent Appeals, as                      
              early as In re Ruschig, 379 F.2d 990, 154 USPQ 118 (CCPA 1967)”).  As explained in                       
              Vas-Cath at 1563-64, 19 USPQ2d at 1117, the purpose of the “written description”                         
              requirement is that “the applicant must also convey with reasonable clarity to those skilled             
              in the art that, as of the filing date sought, he or she was in possession of the invention.             
              The invention is, for purposes of the “written description” inquiry, whatever is now claimed.”           
                     In reviewing the statement of the rejection set forth in this portion of the Examiner’s           
              Answer, we do not find any analysis from the examiner concerning the “written description”               
              requirement of this section of the statute.  Rather, the examiner has focussed on the                    
              enablement requirement of this section of the statute.                                                   
                     Upon return of the application, the examiner should review the rejection of claims 9              
              through 16 under 35 U.S.C.  112, first paragraph, and determine whether the “written                    
              description” requirement of this section of the statute is involved.  If so, the examiner should         
              set forth a new statement of the rejection which explains in a clearer manner how that                   
              requirement is involved.  Alternatively, if the written description requirement is not involved,         
              the examiner should redraft the rejection in an appropriate manner.                                      


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