Appeal No. 96-1943
Application No. 08/147,008
positions may be found on pages 3-16 of the brief and pages 2-
6 of the answer.
OPINION
Considering first the rejection 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). Although the examiner has indicated
that the rejection is based on a failure to provide an
adequate written description of the invention (see Paper No.
23, page 3), it is apparent to us from the examiner's comments
and arguments that the rejection is in reality based upon a
non-enabling disclosure.
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