Appeal No. 97-0972
Application 08/399,571
added.]
In view of the above, we will not sustain the rejection of
claims 4, 8 and 10-12 under 35 U.S.C. § 102(b) as being
anticipated by Reyes.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claims 5 and 9-12 are rejected under 35 U.S.C. § 112, first
paragraph, as being based on a disclosure that fails to provide
support for the subject matter now being claimed. The
description requirement found in the first paragraph of 35 U.S.C.
1l2 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) and In re Barker,
559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied,
434 U.S. 1238 (1978). With respect to the description
requirement, the court in Vas-Cath Inc. v. Mahurkar 935 F.2d at
1563-64, 19 USPQ2d at 1117 stated:
35 U.S.C. § 112, first paragraph, requires a "written
description of the invention" which is separate and
parent claims 1 and 6, this exact same limitation.
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