Appeal No. 96-3054
Application 08/134,147
will reverse the rejection of claims 15 through 18 under 35
U.S.C. § 103, and the rejection of claims 19 through 25 under
35 U.S.C. § 112, first paragraph.
We consider first the rejections under the first
paragraph of 35 U.S.C. § 112. Appellant has characterized
these rejections as “being based on a non-enabling disclosure”
(Brief, pages 3 and 4, items 3 and 9). The Examiner correctly
notes that this is not correct (Answer, pages 2 and 3), and
that the rejection is based upon lack of support in the
specification. It should always be kept in mind that the
written description requirement is a separate and distinct
requirement under
35 U.S.C. § 112, first paragraph. It is clearly separate from
the enablement requirement. Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
The rejection of claims 1 through 7 and 14 states:
Specifically, the limitation where “the multi-cycle
phase detector provides a phase detector output
signal representative of the detected phase
difference updated at least every cycle of the
reference signal” was not disclosed in the
application, as originally filed. (Answer at page
3.)
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