Appeal No. 96-2866 Page 5
Application No. 08/185,221
USPQ2d 1596, 1598 (Fed. Cir. 1988)) and the examiner may not
resort to speculation or unfounded assumptions to supply
deficiencies in establishing a factual basis (see In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967)).
While both Leuenberger and Bray teach the drilling of
holes in bones by the means of oscillating drill bits, there is
nothing in either of these references which overcomes the
deficiencies of Longfellow that we have noted above. This
being the case, we will not sustain the rejections under 35
U.S.C. § 103 of claims 20, 22, 24 and 26 under 35 U.S.C. § 103
based on the combined teachings of Longfellow and Leuenberger
and claims 21, 23 and 25 based on the combined teachings of
Longfellow, Leuenberger and Bray.
Under the provisions of 37 C.F.R. § 1.196(b) we make the
following new rejections:
Claims 20-26 are rejected under 35 U.S.C. § 112, first
paragraph, as being based upon an original disclosure which
fails to provide descriptive support for the subject matter now
being claimed. We initially observe that the description
requirement found in the first paragraph of 35 U.S.C. § 1l2 is
separate from the enablement requirement of that provision.
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