Appeal No. 98-1316
Application No. 08/420,896
where Lee is additionally relied on, (3) claims 4 and 10 where
Polaschegg is additionally relied on and (4) claims 6 and 13
where Gaudin is additionally relied on, we have carefully
studied these references but find nothing therein which would
overcome the deficiencies of Jacobsen that we have noted
above.
The examiner's rejections are all reversed.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection:
Claims 2-6, 8-13, 21 and 22 are rejected under 35 U.S.C.
§ 112, first paragraph, as being based upon an original
disclosure which fails to provide descriptive support for the
subject matter now being claimed. We initially observe that
the description requirement found in the first paragraph of 35
U.S.C. § 112 is separate from the enablement requirement of
that provision. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1560-64, 19 USPQ2d 1111, 1114-17 (Fed. Cir. 1991) and In
re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977),
cert. denied,
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