Appeal No. 95-4065
Application No. 07/872,185
The Answer refers to Paper No. 16, dated Nov. 26, 1993,
for the statement of the rejection (Answer, page 3). The
examiner’s rejection of claims 8, 9 and 22 under the first
paragraph of
§ 112 is for “failing to provide an adequate written
description of the invention” (Paragraph 15, page 2, see also
paragraph 16, page 3, of Paper No. 16). Immediately following
this reason for the rejection the examiner states that “[i]t
is not clear from the enabling description ...” (Paragraph 15,
page 2, Paper No. 16, emphasis added).
As our reviewing Court has stated in Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991), “...we hereby reaffirm, that 35 U.S.C. 112, first
paragraph, requires a ‘written description of the invention’
which is separate and distinct from the enablement
requirement.” The examiner’s rejection states that appellants
have failed “to provide an adequate written description”
(Paragraph 15, page 2, Paper No. 16) but sets forth reasoning
for a lack of enablement rejection (Id. at pages 2-3). Since
the basis for the rejection is unclear, we will discuss both
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