Ex parte OGURO et al. - Page 7




          Appeal No. 1997-2857                                                        
          Application 08/171,175                                                      


               With respect to the 35 U.S.C. § 112, first paragraph,                  
          rejection, 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 USPQ2d                   
          1111, 1114 (Fed. Cir. 1991).  The terminology “lack of                      
          support” has also been held to imply a reliance on the written              
          description requirement of the statute.  In re Higbee and                   
          Jasper, 527 F.2d 1405, 1406 188 USPQ 488, 489 (CCPA 1976).                  


               In view of the factual situation presented to us in this               
          instance we will interpret the Examiner’s basis for the 35                  
          U.S.C. § 112, first paragraph rejection as reliance on the                  
          “written description” portion of the statute.  “The function                
          of the description requirement [of the first paragraph of 35                
          U.S.C.                                                                      
          § 112] is to ensure that the inventor has possession, as of                 


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