Appeal No. 1996-2809
Application No. 08/399,961
(5) Claims 19 and 20 under 35 U.S.C. 103 as unpatentable over
Saprokhin in combination with Tricoli “as applied to claims
1-[, 6] and 8-11 above, and further in view of [Marshall].”
We reverse each of the foregoing rejections. Our reasons
for this determination follow.
We turn first to the rejection of claims 10 and 20 under
35 U.S.C. § 112, first paragraph, as failing to provide an
adequate written description of the invention. We note that
while the examiner states her rejection is based on an
adequate written description of the invention , it is apparent 1
to us from the examiner's comments and arguments that the
rejection is in reality based upon a non-enabling disclosure.
With regard to the question of enablement, the court in In re
Gaubert, 524 F.2d 1222, 1226, 187 USPQ 664, 667 (CCPA 1975)
sets forth a quote from Martin v. Johnson, 454 F.2d 746, 751,
172 USPQ 391, 395 (CCPA 1972) as follows:
To satisfy §112, the specification disclosure must
be sufficiently complete to enable one of ordinary
skill in the art to make the invention without undue
1The limitations recited in claims 10 and 20 are part of
the original disclosure and do not violate the written
description requirement under 35 U.S.C. § 112, first
paragraph.
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