Appeal No. 96-1902
Application No. 08/156,679
We have carefully reviewed the appellants' invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellants in the brief and reply brief, and
by the examiner in the answer and supplemental answer. As a
consequence of this review, we will sustain the rejections of
claims 11-13,
15 and 16 under 35 U.S.C. § 103. We will not, however,
sustain the rejection of claims 11-13, 15 and 16 under 35
U.S.C. § 112, first paragraph.
Considering first the rejection of claims 11-13, 15 and
16 under 35 U.S.C. § 112, first paragraph, we initially
observe that the 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, 1560-64, 19 USPQ2d 1111, 1114-17
(Fed. Cir. 1991) and In re Barker, 559 F.2d 588, 591, 194 USPQ
470, 472 (CCPA 1977), cert. denied, 434 U.S. 1238 (1978).
With respect to the description requirement, the court in Vas-
Cath, Inc. v. Mahurkar at 935 F.2d 1563-64, 19 USPQ2d 1117
stated:
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