Appeal No. 97-1493
Application 08/429,806
rejection (see pages 3 and 4 in the brief) indicate that the 2
first and second pressures are functions of the tractor trailer
engine being turned on and off, respectively. In contrast, there
is nothing in the original disclosure which indicates that these
pressures are functions of the carrier being stationary or
transported. Thus, the disclosure of the application as
originally filed would not reasonably convey to the artisan that
the appellant had possession at that time of a restraining system
comprising “a means for changing the pressure of the fluid from a
first pressure when the carrier is stationary to a second
pressure . . . when the carrier is transported” as recited in
claim 12.
Accordingly, we shall sustain the standing 35 U.S.C. § 112,
first paragraph, rejection of claim 12 and of claims 13 through
19 which depend therefrom.
We also shall sustain the standing 35 U.S.C. § 112, second
paragraph, rejection of claims 12 through 19.
2The appellant’s arguments betray a misguided belief that
the rejection is based on a failure of the specification to
comply with the enablement, rather than the written description,
requirement of § 112, first paragraph. The examiner’s
explanation clearly indicates, however, that it is the latter
requirement which is at issue. The written description and
enablement requirements are, of course, separate and distinct.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991).
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