Ex parte DATON-LOVETT - Page 3




          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,                    

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