Appeal No. 1997-4111 Page 5
Application No. 08/540,947
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The rejection under 35 U.S.C. § 112, first paragraph
We will not sustain the rejection of claims 1, 3, 4 and
11 under 35 U.S.C. § 112, first paragraph.
It is well settled that the written description and
enablement requirements are separate and distinct from one
another and have different tests. See In re Wilder, 736 F.2d
1516, 1520, 222 USPQ 369, 372 (Fed. Cir. 1984); In re Barker,
559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA 1977); and In re
Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971).
However, from our reading of this rejection (answer, p. 4) it
is unclear to us if this rejection is based on the written
description requirement or the enablement requirement or both.
Accordingly, we will treat this rejection as being based on
each requirement.
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