Appeal No. 96-1246
Applicaton No. 08/205,812
and 17 through 20 are properly rejected under 35 U.S.C. § 112
or are properly rejected under 35 U.S.C. § 102 as being
anticipated by the applied references.
The Examiner objects to the specification on the
basis of written description and then argues that the
specification is not enabling. Our reviewing court has made
it clear that written description and enablement are separate
requirements under the first paragraph of 35 U.S.C. § 112.
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d
1111, 1114 (Fed. Cir. 1991). Thus, we will treat these two
issues separately.
"The function of the description requirement [of the
first paragraph of 35 U.S.C. 112] is to ensure that the
inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him." In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). "It is not necessary that the application
describe the claim limitations exactly, . . . but only so
clearly that persons of ordinary skill in the art will
recognize from the disclosure that appellants invented
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