Ex parte FUKUYAMA - Page 7




          Appeal No. 1996-3324                                                        
          Application No. 08/132,969                                                  


          the rejection.  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 USPQ 2d 1111, 1114 (Fed.               
          Cir. 1991).  The terminology “lack of support” has also been                
          held to imply a reliance on the written description                         
          requirement of the statute.  In re Higbee and Jasper, 527 F.2d              
          1405, 188 USPQ 488, 489 (CCPA 1976).                                        
               In view of the factual situation presented to us in this               
          instance we will interpret the Examiner’s basis for the 35                  
          U.S.C. § 112, first paragraph rejection as reliance on the                  
          “written description” portion of the statute.  “The function                
          of the description requirement [of the first paragraph of 35                
          U.S.C.                                                                      
          § 112] is to ensure that the inventor has 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 describe the claim limitations               
          exactly, . . . but only so clearly that persons of ordinary                 
          skill in the art will recognize from the disclosure that                    
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