Appeal No. 1996-0047
Application No. 08/047,758
Accordingly, appellants’ remedy regarding this matter is
through petition to the Commissioner under 37 CFR § 1.181 and
§ 1.191.
We now turn to the rejection of claims 1 through 33 under
35 U.S.C. § 112, first paragraph. The examiner takes the
position that the disclosure as originally filed (1) lacks
descriptive support for the subject matter presently claimed;
(2) lacks an enabling disclosure for the subject matter
presently claimed; and (3) lacks the best mode of practicing
the subject matter presently claimed. We do not subscribe to
any of the examiner’s positions for substantially those
reasons set forth in the Brief and the Reply Brief. We add
the following primarily for emphasis and completeness.
We initially note that the written description
requirement found in the first paragraph of 35 U.S.C. § 112 is
separate from the enablement requirement of that provision.
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561-63, 19
USPQ2d 1111, 1115-17 (Fed. Cir. 1991); In re Barker, 559 F.2d
588, 591, 194 USPQ 470, 472 (CCPA 1977), cert. denied, 434
U.S. 1064, 197 USPQ 271 (1978). With respect to the written
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