Appeal No. 97-0819
Application 08/252,063
We observe that the examiner’s contentions are more akin
to the written description requirement than the enablement
requirement of § 112, first paragraph. We point out that
claims may satisfy the enablement requirement but not the
written description requirement of this section. See In re
Ahlbrecht, 435 F.2d 908, 911, 168 USPQ 293, 296 (CCPA 1971).
However, the arguments as advanced by the examiner do not,
prima facie, establish that, as a factual matter, the claimed
invention was not adequately described to one of ordinary
skill in this art by the disclosure in the specification at
the time the application was filed. See In re Alton, 76 F.3d
1168, 1175, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996); Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111, 1117
(Fed. Cir. 1991); In re Wertheim, 541 F.2d 257, 262, 264, 191
USPQ 90, 96, 98 (CCPA 1976).
The examiner’s decision is reversed.
Reversed
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
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