Appeal No. 2000-0287 Page 7
Application No. 08/663,300
For the foregoing reasons, we shall not sustain the examiner's rejection of independent
claims 1, 13, 16, 17 and 19, or claims 2-12, 14 and 15 and 18 which depend from claims 1, 13
and 17, respectively, under the first paragraph of 35 U.S.C. § 112, as containing subject matter
which was not described in the specification in such a way as to enable one skilled in the art to
which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Rejection (2)
The examiner has rejected claims 13-15, 17 and 18 under the first paragraph of 35
U.S.C. § 112 on the basis that the limitation "a stress of lower than 100 g at 30% stretch"
(claim 13, line 9; claim 17, line 16) is not supported in the specification as originally filed. We6
initially observe that the description requirement found in the first paragraph of 35 U.S.C. §
1l2 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, 434 U.S. 1238
(1978). With respect to the description requirement, the court in Vas-Cath, Inc. v. Mahurkar,
935 F.2d at 1563-64, 19 USPQ2d at 1117 stated:
35 U.S.C. § 112, first paragraph, requires a "written description of the
invention" which is separate and distinct from the enablement requirement. The
purpose of the "written description" requirement is broader than to merely
explain how to "make and use"; the applicant must also convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she was
6These stress value limitations were added to claims 13 and 17 in the amendment filed February 20, 1998
(Paper No. 9).
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