Appeal No. 1999-0738
Application No. 08/474,195
Claims 1, 4, 15 and 19 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Groskopfs.
Reference is made to appellant’s main and reply briefs
(Paper Nos. 45 and 49) and to the examiner’s answer (Paper No.
48) for the respective positions of appellant and the examiner
regarding the merits of these rejections.
Discussion
The rejection under 35 U.S.C. § 112, first paragraph
The written description and enablement requirements found
in the first paragraph of 35 U.S.C. § 112 are separate and
distinct. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991).
In setting forth on page 5 of the answer the reasons for
the standing rejection under 35 U.S.C. § 112, the examiner
states:
. . . [I]t is noted that the disclosure on page 4
does not fully disclose the invention to enable one
to make and use the invention. The specification
does not explain how each layer retains its bias
characteristic when bonded together. In other
words, when the two opposed biased layers [are]
affixed together, either the inner layer would keep
the outer layer from forming a tubular
configuration, or the inner layer would loose [sic,
3
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