Ex parte THOMAS J. GREENBOWE et al. - Page 4

                Appeal No. 96-2865                                                                                                            
                Application No. 08/081,561                                                                                                    

                73 in the main brief and pages 3 and 4 in the reply brief).  This                                                             
                objection is not directly connected with the merits of issues                                                                 
                involving a rejection of claims and therefore is reviewable by                                                                
                petition to the Commissioner rather than by appeal to this Board.                                                             
                See In re Hengehold, 440 F.2d 1395, 1403-1404, 169 USPQ 473, 479                                                              
                (CCPA 1971).  Accordingly, we shall not review or further discuss                                                             
                the examiner’s objection to the drawings.                                                                                     
                         Turning now to the rejections on appeal, it is not clear                                                             
                from the examiner’s explanation (see pages 4, 5 and 9 through 11                                                              
                in the answer) whether the 35 U.S.C.  112, first paragraph,                                                                  
                rejection is based on an alleged failure of the appellants’                                                                   
                specification to comply with the written description requirement,                                                             
                the enablement requirement or both of these requirements of                                                                   
                35 U.S.C.  112, first paragraph.   For the sake of completeness,2                                                                      
                we have assumed that the rejection is based on an alleged failure                                                             
                to comply with both requirements.                                                                                             
                         The test for determining compliance with the written                                                                 
                description requirement is whether the disclosure of the                                                                      
                application as originally filed reasonably conveys to the artisan                                                             

                         2The written description and enablement requirements of 35                                                           
                U.S.C.  112, first paragraph, are separate and distinct.  Vas-                                                               
                Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117                                                             
                (Fed. Cir. 1991).                                                                                                             

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007