Appeal No. 97-0124
Application No. 08/273,672
extent that separate arguments are of record in this appeal. Any
dependent claims not separately argued will stand or fall with
their parent claim.
It is our view, after consideration of the record before us,
that the disclosure in this application describes the claimed
invention in a manner which complies with the requirements of
35 U.S.C. § 112. We are also of the view that the disclosure of
Guzowski fully meets the invention as recited in claims 1, 4,
7/4, 8, 9, and 10/1. 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 2, 5, 7/5,
and 10/2. Accordingly, we affirm-in-part.
We consider first the rejection of claims 4-9 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
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