Appeal No. 1997-2856
Application 08/394,251
The Examiner states that there is no support in the
specification as originally filed for the limitations:
(1) the distance between adjacent cylindrical sections is not
larger than half the dimension across either of the
cylindrical sections (claims 19, 20, 21 (by virtue of its
dependency), 26, 27, and 28-31 (by virtue of their
dependencies)); and (2) the maximum diameter of the
fluorescent lamp being no larger than twice the maximum
diameter of the screw base (claim 31). The Examiner states
that the drawings do not provide support since the drawings
are not to scale (FR2).
It is clear that the Examiner's rejection is based on
lack of written description under 35 U.S.C. § 112, first
paragraph, not on lack of an enabling disclosure of how to
make a lamp with these limitations, because the limitations
themselves are enough to allow one to make and use. The
written description rejection under § 112, first paragraph, is
used to reject when a claim is amended to recite elements
thought to be without support in the original disclosure. See
In re Rasmussen, 650 F.2d 1212, 1214-15, 211 USPQ 323, 326
(CCPA 1981). "Satisfaction of the description requirement
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