Appeal No. 96-2274
Application No. 08/291,354
the details thereof.
OPINION
After a careful review of the evidence before us, we do
not agree with the Examiner that claims 18 through 21, 25 and
27 through 30 are properly rejected under 35 U.S.C. § 112.
It is not clear whether the Examiner is objecting to the
specification on the basis of written description or
enablement. 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 USPQ2d 1111, 1114 (Fed.
Cir. 1991). Thus, we will treat these two issues separately.
"The function of the description requirement [of the
first paragraph of 35 U.S.C. 112] is to ensure that the
inventor had possession, as of the filing date of the
application relied on, of the specific subject matter later
claimed by him." In re Wertheim, 541 F.2d 257, 262, 191 USPQ
90, 96 (CCPA 1976). "It is not necessary that the application
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