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).
4
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