Appeal No. 96-0309
Application 08/135,370
art [to] make and use the claimed invention without undue
experimentation" (Final Rejection, page 2). The Examiner's
Answer more particularly identifies the bases of the rejection
under § 112, first paragraph, as both the written description
requirement and the enablement requirement.
We refer to the Final Rejection (Paper No. 16) and the
Examiner's Answer (Paper No. 23) (pages referred to as "EA__")
for a statement of the examiner's position and to the Brief
(Paper No. 21) (pages referred to as "Br__") for a statement
of the appellants' position.
OPINION
Enablement and written description rejection
The written description rejection under § 112, first
paragraph, is used to reject when a claim is amended to recite
elements thought to be without support in the original
disclosure. In re Rasmussen, 650 F.2d 1212, 1214-15,
211 USPQ 323, 326 (CCPA 1981). "Satisfaction of the
description requirement insures that subject matter presented
in the form of a claim subsequent to the filing date of the
application was sufficiently disclosed at the time of filing
so that the prima facie date of invention can be held to be
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