Appeal No. 95-4761
Application No. 08/012,781
With respect to the 35 U.S.C. § 112, first paragraph
rejection, we note that the Examiner, instead of relying on
the “written description” or “enablement” language of the
statute, has used the terminology “lack of support” in the
statement of the rejection. 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 USPQ 2d
1111, 1114 (Fed. Cir. 1991). The terminology “lack of
support” has also been held to imply a reliance on the written
description requirement of the statute. In re Higbee and
Jasper, 527 F.2d 1405, 1406, 188 USPQ 488, 489 (CCPA 1976).
In view of the factual situation presented to us in this
instance we will interpret the Examiner’s basis for the 35
U.S.C. § 112, first paragraph rejection as reliance on the
“written description” portion of the statute. “The function
of the description requirement [of the first paragraph of 35
U.S.C.
§ 112] is to ensure that the inventor has possession, as of
the filing date of the application relied on, of the specific
subject matter later claimed by him.” In re Wertheim, 541
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