Appeal No. 1007-0016
Application No. 08/162,333
35 U.S.C. § 112. We are also of the view that the claims
particularly point out the invention in a manner which
complies with 35 U.S.C. § 112, second paragraph. In addition,
it is our opinion that the evidence relied upon and the level
of skill in the particular art would not have suggested to one
of ordinary skill in the art the obviousness of the invention
as set forth in claims 11, 13-16, and 18-22. Accordingly, we
reverse.
The rejection of claims 11, 13-16, and 18-22
under the first paragraph of 35 U.S.C. § 112.
We note that the Examiner, instead of relying on the
written description” or “enablement” language of the statute,
has used the terminology “lack of support” in the statement of
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
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