Appeal No. 96-0877
Application 08/123,639
We agree that there is no descriptive support in
appellant’s specification as filed for ?[a]n implantable
prosthetic heart? in its entirety. Instead, the specification
as filed merely discloses a prosthetic component for the
heart, namely a prosthetic heart valve. We will therefore
sustain the rejection of claim 1 and claims 2, 3, 8/1 and 9,
which depend from claim 1, based on the description
requirement in the first paragraph of
§ 112.
Unlike claim 1, claim 4, the only other independent claim
on appeal, does not call for a prosthetic heart as such and,
instead, is directed to the prosthetic heart valve itself. We
will therefore reverse the rejection of claims 4 through 7 and
8/4 based on the description requirement in the first
paragraph of § 112.
With regard to the enablement requirement in the first
paragraph of § 112, the test is whether an applicant’s
disclosure, considering the level of ordinary skill in the art
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007