Appeal No. 1996-3536 Page 6
Application No. 08/509,006
the specification." The appellant then specifies (brief, pp.
4-10) where support in the specification can be found for the
claimed subject matter.
It is well settled that the written description and
enablement requirements set forth in the first paragraph of 35
U.S.C. § 112 are separate and distinct from one another and
have different tests. See In re Wilder, 736 F.2d 1516, 1520,
222 USPQ 369, 372 (Fed. Cir. 1984); In re Barker, 559 F.2d
588, 591, 194 USPQ 470, 472 (CCPA 1977); and In re Moore, 439
F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971). Since the
examiner's basis for the rejection on appeal is based on a
lack of support for the invention as is now claimed, it is not
entirely clear to us exactly which requirement the examiner's
rejection is based upon. Accordingly, we will review the
claims as having been rejected under both the written
description and enablement requirements.
Written description requirement
The test for determining compliance with the written
description requirement is whether the disclosure of the
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