Appeal No. 1998-1660
Application No. 08/108,499
rationale in support of the rejections and arguments in
rebuttal set forth in the Examiner’s Answers.
It is our view, after consideration of the record before
us, that the disclosure in this application describes the
claimed invention in a manner which complies with the
requirements of the first paragraph of 35 U.S.C. § 112. We
are also of the view that the disclosure of Ghandhi does not
fully meet the invention as set forth in claims 11-14. In
addition, we are of the conclusion that the evidence relied
upon and the level of skill in the particular art would not
have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claims 11-15.
Accordingly, we reverse.
We consider first the rejection of claims 13 and 14 under
the first paragraph of 35 U.S.C. § 112. 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
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