Appeal No. 96-3174
Application 07/970,608
the of said mold members” appearing in the whereby clause of
paragraph (b) is confusing.
The 35 U.S.C. § 112, first paragraph, rejection
In rejecting claims 1-20 under the first paragraph of 35
U.S.C. § 112, the examiner maintains that “[t]he original
claims, specification, and abstract lack a full, clear,
concise, and exact disclosure of how the compression of the
resin takes place simultaneously with the injection of the
resin” (answer, page 5). It is apparent from this statement
that the examiner’s rejection is based on an alleged failure
of the original disclosure to comply with the enablement
requirement, as opposed to the description requirement, of the
first paragraph of 35 U.S.C.
§ 112.4
The test for enablement is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without
4The description requirement found in the first paragraph
of § 112 is separate from the enablement requirement of that
provision. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1560-64, 19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991).
7
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